1) IP PORTFOLIO MANAGEMENT

Our IP portfolio structure has the capability to support large and complex domestic/foreign IP matters. We manage international and domestic filing of applications through to registration and handle appeals of trademarks, designs, patents and copyright registrations on behalf of clients.

We respond to foreign associates by providing information and documentation necessary to prosecute and obtain registrations, renewals, assignments, and change of address/name of trademarks, patent, copyright and design.

Our portfolio management services includes maintenance of trademarks, copyright patents & design propietorship, first draft response to inquiry, oppositions, cancellations, withdrawals, surveillance and general administrative procedures including liasing with registry officials.

 

2) SEARCHES

At IPI WATCH SERVICES, we fully understand the essence of conducting searches that is why we advise our clients as a crucial first step, to determine the availability of a mark or other intended IP right prior to use.

We provide a full range of IP and corporate search services for foreign IP law firms, corporate organisations, individuals and brand owners.

Our search types include:

A. Availability search

This comprises of a comprehensive search of the index card, register and physical file at the registry to determine if the proposed mark or IP right intended to be registered or used does not conflict with an identical or similar right that has been filed or registered earlier.

B. Registrability Search

This type of search is conducted prior to registration to determine if the proposed mark or IP right is registrable under the appropriate laws.

C. Corporate Search

If the name of a cited company is in conflict with an earlier registered trademark, An application under section 31(4) of the Companies and Allied Matters Act 1990 can be made to strike off the company name which is similar or identical to the existing trademark .

D. Screening Search

This type of search is limited to the client's instructions.

E. Comprehensive Search

This search type will advise on the strategy used to conduct the search, specification of goods and services the search was conducted with, similar or identical company name or trademark search, legal advice on how client can overcome the problems associated with the findings on the cited marks or other IP rights.

3) TRADEMARKS, DESIGNS, PATENTS AND COPYRIGHT FILING & REGISTRATION

We act as agents in filing applications for the registration of trademarks, copyright, patents and designs.

Upon receipt of client's instructions, our task includes monitoring the application from filing through to registration and providing client with requisite information concerning third party objections on the application.

Procedure for registering a trademark

1. Fill in a search form entering the name of the mark and the class you want to search and the specimen of the mark to be conducted in. (optional)

2. Provide us with the name or representation of the mark, list of goods, address of the applicant and a duly executed power of attorney (a suitable sample can be provided upon request).

3. Once the filing fees have been paid, the registry acknowledges receipt of the application by issuing an acknowledgement form which shows the temporary number alloted to the application

4.The Registrar thereafter examines the application by causing a search to be conducted in the register of trademarks for similar or existing registered or pending applications.

5. If the mark is free from encumbrance, the Registrar issues an acceptance to the trade mark application and it is passed to the publication department for advertisement in the Trademarks Journal.

6. An application is statutorily advertised for two months and upon expiration of the two months opposition period, if no notice of opposition is filed against the registration of the advertised mark, the Registrar shall cause the trademark to be entered in the register of Trademark.

7. The estimated time frame within which a trademark can be registered is between 8-12 months.

Duration of registration and Renewal of Trade Marks

A trade mark is registered for a period of seven years and may be renewed for a period of fourteen years from the expiration of the last registration upon payment of the renewal fees.

Click to view the classification of goods in Nigeria

Procedure for registering a patent

The application form together with the under listed documents are requested to be submitted to the registrar:

1. A petition or request for a patent with the applicant's full name and address

2. A specification of the patent including a "claim" or "claims" in duplicate

3. Plans and drawings, if any, in duplicate

4. A declaration by the true inventor (requisition that he be mentioned as such in the patent)

5. A signed Power of Attorney or Authorisation of Agent if the application is made by an agent

6. An address for service in Nigeria if the applicant's address is outside Nigeria

7. The prescribed fee and

8. Any other matter prescribed by the Registrar from time to time.


Grant, Registration and Publication of a Patent

Grant of a patent is made by the issue of a patent certificate with a copy of each of the specifications and the relevant drawings and plans annexed to it. The Registrar thereafter, enters the particulars of the grant and causes a notice of the grant to be published in the Federal Gazette.

Duration, Renewal and Lapse

The period of monopoly granted by a patent is twenty years from the date of filing of the patent application. During the twenty years period, the patent registration must be renewed annually by lodging an application together with the prescribed fees, not later than the due date; otherwise, the applicant will be liable to pay a prescribed penalty for late renewal.

Procedure for filing a copyright notification

Though copyright is not registrable in Nigeria, a notification of existence of an Intellectual Property right in the work can be filed with the Nigerian Copyright Commission in recognition of the copyright in the work.

A copy of the work sought to be protected together with the prescribed application form are submitted to the Nigerian Copyright Commission for verification. A certificate is thereafter issued if the work is found to be eligble for copyright.

Procedure for Registration of Designs

A design is registrable, if it is new and is not contrary to public order or morality. A design is presumed to be new at the time of application unless the design has been made available to the public anywhere and anytime by means of description, use or in any other way.

Application for Registration of Design must contain:

1. A request for the registration of the design

2. The applicant's full name and address and if the address is outside Nigeria, an address for service in Nigeria

3. A specimen of the design or a photographic or graphic representation of the design with the printing block for reproduction

4. An indication of the kind of product for which the design will be used

5. Where the application is made by an agent on behalf of a foreign client, a signed Power of Attorney.


Duration and Renewal

Registration of a design is for five years from the date of the application for registration and it is renewable upon payment of the prescribed fees for two consecutive periods of five years.

4) LOCAL COUNSEL REPRESENTATION ON IP TRANSACTIONAL MATTERS

We represent foreign and local brand owners at meetings involving on going transactional matters leading up to contractual agreements.

We advice client of potential or existing infringement of their IP right, by investigating facts surrounding the intended or actual use of cited mark by the infringers. In our capacity as local representatives, we will approach the infringers and notify them of our client's IP rights with a view to registering our client's interest in protecting their IP right and putting a stop to the unlawful and continued use of our client's right.

We have experience in negotiating the resolution of a potential infringement/passing off litigious matter. This from our experience has proven to be an effective and time saving way of resolving potential litigation.

5) BRAND FRANCHISING AND LICENSE AGREEMENT

Rapid growth in the Nigerian economy coupled with high level of developments has led international organisations to show interest in investing in Nigeria by expanding their business through brand franchising.

At IPI Watch Services, we understand that brand franchising does not constitute an authority to register the brand in the licensee's name that is why we offer legal advice on pre-and post contractual engagement terms to ensure brand owners are protected locally.

Before an agreement is reached with a local company wishing to obtain a franchise, we can assist in conducting due diligence on the local company to ensure that the information and infrastructural facilities provided the franchisor are consistent with the standard requirement of the franchisor.

Where an agreement has been reached with a local company, we are able to assist with obtention of the various local regulatory approvals that must be obtained before a successful start up. We also prepare the license agreements and file same with appropriate authorities.

6) INVESTIGATION AND WATCH SERVICES

Our investigation and watch service is focused on helping our client to protect their IP rights from infringement and passing off by keeping vigilant over their IP applications/registrations.

Under Our watch service program, we can alert our clients about a potential violation of their Intellectual Property rights.

Our investigations are based on detailed and actionable intelligence report founded on thorough process of inquiry, interviews, research, sample purchase, obtention of evidence, market survey, and physical visitation.

Our report will provide:

• Details of any statutory registrations or protections
• Particulars of the proprietor of the cited mark or infringer
• Description of the goods or services covered under the mark or rights been investigated
• The geographical channels of distribution, strength and scope of use
• Date of first use, date of last use and if cited mark is still in use or not
• Legal opinion on the chances of success and available options of tackling the problem that will assist right owners analyse the best option to take.

 

7) IP CONSULTANCY

We consult on IP matters ranging from IP dispute resolution to commercial IP transactions involving contentious and non contentious issues in relation to acquisition, transfers and finance, negotiation and structuring of contractual deals, drafting of contractual and other forms of IP agreement.

We work closely with clients to strategise on how best to develop their brand in line with their set objectives within the environment they intend to operate.

We pride our consultancy services as responsive and providing high quality service that takes account of our client's commercial objectives and budget.

8) IP LITIGATION

Our Litigation team is familiar with the procedures and tactical operations of the laws which regulates all matters relating to IP in Nigeria. Under the various Acts relating to IP Nigeria, the owner of a registered right is given the exclusive right to use it in relation to the particulars of registration and any unauthorized use allows the owner to sue for infringement.

Where the trademark is not registered, the proprietor's right of action lies in the common law tort of passing off.

9) ENFORCING IP RIGHTS THROUGH GOVERNMENT AGENCIES

Apart from exercising the statutory options available to right owners, an IP right holder may receive support from various authorised agencies to stop the infringement or perforation of his IP rights. The intervention of these agencies has proven to be effective in disrupting the business activities of identified infringers.

Such agencies include:

MANUFACTURERS ASSOCIATION OF NIGERIA (MAN)

This is an association of local manufacturers who lobby to protect the interest of their members from unlawful competitors. This association enjoys the support of the Government.

STANDARDS ORGANISATION OF NIGERIA (SON)

SON was established primarily to deal with matters relating to industrial standards and to ensure that goods imported into the country are not sub-standard and are in compliance with approved standards in the country of import.

NIGERIAN CUSTOMS SERVICES (NCS)

The assistance of the NCS is usually sought to procure relevant information, which may lead to the detection and the seizure of containers of infringing goods.

NIGERIA POLICE FORCE (NPF)

The presence of the NPF is usually needed in enforcement and criminal prosecution.

MARKET UNION

The assistance of the association can be enlisted to educate their members by creating awareness about infringement of an IP right.

CONSUMER PROTECTION COUNCIL (CPC)

Amongst its other functions, the CPC can assist to seek ways and means of removing or eliminating from the market hazardous products and causing offenders to replace such products with safer and more appropriate alternatives.

10) REGULATORY APPROVALS

There are some agreements that require the obtention of statutory approvals through government agencies before the agreement can be implemented. We can assist in processing the registration of such approvals with the appropriate agencies.

Some of the government agencies are:

(a) NATIONAL AGENCY FOR FOOD AND DRUG ADMINISTRATION (NAFDAC)


This is parastatal of the Federal Ministry of Health with the mandate to regulate and control quality standards for Foods, Drugs, Cosmetic, Medical Devices, Chemicals, Detergent and Packaged water imported or manufactured locally and distributed in Nigeria. All manufacturers or agent whose products fall within the regulated goods are required to register with NAFDAC and comply with the guidelines. Evidence of trademark registration of the product name is a perquisite for NAFDAC registration.

(b) NATIONAL OFFICE OF TECHNOLOGY ACQUISITION AND PROMOTION(NOTAP)


The primary objective of NOTAP is to monitor on a continuing basis, the transfer of foreign technology to Nigeria. Where agreements relating to the transfer of technology, such as Management, Engineering Service and Technical Services Agreements, (which may be relevant for the purpose of the Parent Company achieving its objectives in Nigeria), are intended to be concluded between a foreign company and a local company, such agreements are required to be registered with NOTAP.

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