Industrial Designs (Ownership, Registration etc.) – Inioluwa Olaposi
Industrial Designs in Nigeria
Want to know about industrial design rights in Nigeria? Sit tight!
A lot goes into the production of goods and services. A lot in steps and processes. One major step in the production of an industrial product is the making of a design.
In simple parlance, a design is a sketch, drawing, etc., of what the product will look like before it is made. In other words, a design projects the frame, and display dimensions of a product.
In industries, from automobile to fashion, designs are of crucial importance. They usually carry heavy economic and reputative value. Fortunately, these are some of the key areas offered protection by intellectual properties like copyright, trademarks and patent.
Technically, according to the World Intellectual Property Organization (WIPO), an industrial design constitutes the ornamental aspect of an article. It may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.
In Nigeria, industrial designs are protected by the Patents and Designs Act 1970 (Cap P2 LFN 2004). Specifically, sections 12-22 of the Act contain provisions special to the protection of designs.
What can be an Industrial Design
Any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result. – Section 12.
For a design to be registrable, it must be new. That it to say, it must not have been made available to the public before application for registration. However, a design is not public if it was only officially exhibited six month before its application for registration.
Additionally, a design that was communicated confidentially, or to someone who has an interest in it, will not be deemed as published.
In the case of Blank v. Footman, Pretty & Co. (1988) 5 R.P.C. 653, pages 460, 461, Blank, the proprietor of a design, showed it to Hummel before registering it. Hummel was a commission agent who had the sole right of selling Blank’s goods in England. It was held that Hummel, therefore, had an interest in the Design and thus the communication made to him must be regarded as confidential. And being confidential, it does not amount to publication.
The decision above was given judicial credence in the Supreme Court case of F.O. Ajibowo & Co. Ltd. v. Western Textiles Anor (1917-1976) 1, I.P.L.R. In this case, the disclosure of the design was made to the Plaintiffs/Respondents who had an interest in the manufacture of the design for the Defendants/Appellants. The Court, citing Blank’s case, held that there was no publication made.
Also, a design that is contrary to public order or morality cannot be registered.
In Ethylene Products & Lubricants Ltd. V. Delta Manufacturing Co. Ltd. (2003-2007) 5, I.P.L.R page 318, Abdullahi Mustapha, J. held thus, “Section 13 (1) & of (2) Patents and Designs Act reads: … it would be seen from the above provisions that an Industrial Design can only be registered if it is new and it is not contrary to public order and morality.”
Ownership of Design Rights
The right to registration of an industrial design is vested in the Statutory Creator, whether he is the true creator or not. A statutory creator is the first person to file an application for the registration, or claim foreign priority on the design.
When a statutory creator is not the true creator, the latter shall be entitled to be named as the true creator in the registration. This is a right that cannot be modified by contract. Moreover, if a supposed statutory creator files an application without the consent of the true creator, the rights in such registration shall be deemed to be transferred to the true creator.
Additionally, when an industrial design is created by an employee within the course of his employment, the rights in such creation shall be vested in the employer. This is also the case if the design was made in the course of a commissioned work.
However, an employee who makes a design not in the course of his employment but using the means of his employment, shall be entitled to fair remuneration. Or else, he can bring an action for enforcement.
Registration of Industrial Designs in Nigeria
Every application for registration of an industrial design shall be made to the Registrar. The registrar is in charge of the Trademarks, Patent and Design Registry. The registry is under the Commercial Law Department of the Ministry for Industry, Trade and Investment.
By powers conferred by the Act, the registrar shall examine every application to make sure it is in compliance with sections 13 (1) (b) and 15 of the Act. That is to say, the registrar shall check for whether the design is not contrary to public order or morality. And whether the necessary information like applicant’s full name and address, a specimen of the design, etc., are provided, as well as prescribed fee paid.
If the application does not comply with necessary requirements, the registrar shall reject the application. Any person grieved by the decision of the registrar may appeal to the Court.
Foreign Priority in Design Registration
Nigeria is a party to conventions and treaties relating to intellectual properties. For example, Nigeria is a signatory to the Patent Cooperation Treaty (PCT), in line with the Paris Convention for the Protection of Industrial Property (1883).
According to Section 27 of the Patents and Designs Act, the Minister may declare a country or countries as a convention country (ies) by an order in the Federal Gazette. When this is done, an application filed by a person in Nigeria who has earlier made the same application in a convention country shall be entitled to foreign priority.
In other words, the application filed in Nigeria shall be deemed to be filed as at the time the application was made in the other country. However, for such an application to enjoy foreign priority, it must be made within six months of making the foreign application.
Consequentially, the application with foreign antecedent shall be granted, over a new local application with no prior filing.
Deposit System in Design Registration
The registrar is mandated by the Patent and Design Act to verify if the application for Design rights has compiled with the requirements of the Act, not to check if the design is registrable. See section 16 (2) of the Act.
In other words, Nigeria operates a Deposit System of registration, as opposed to the Examination System obtainable in industrialised countries.
This means that even though an application for design rights is granted by the registrar, it is granted as applied for. It does not mean the design in question is new. Determining whether or not a design is new is left to the decision of a court of competent jurisdiction.
That is to say, the Court shall determine whether the application complies with the requirement of newness under Section 13 (1) (a) of the Act. If the Court decides that the design does not pass the test of newness, the granted rights shall be declared null and void.
Therefore, in Nigeria, the burden of proof is upon whoever is contesting a design to prove that such an a design is not new.
Lifespan of Design Rights in Nigeria
Industrial design rights in Nigeria are effective for five years from the date the application was made. With payment of the prescribed fee, it can be renewed for two consecutive periods of five years each. The prescribed fee shall be paid within six months into the renewal period.
Infringement on Industrial Design Rights
Registering an industrial design confers rights on the creator. It precludes any other person from reproducing, importing, selling or utilising the design in manufacturing or for commercial purposes.
Thus, any person that deals with a design in an unauthorised manner is infringing on the rights of the creator. Such a person is an infringer, and can be subject to liabilities by the order of a court.
The Court of competent jurisdiction in matters relating to infringement of Industrial design rights is the Federal High Court. The decision of the Court can be appealed to the Court of Appeal, and then to the Supreme Court.
The Court may grant remedies against the defendant in injunctions and damages.