2^nd INTELLECTUAL PROPERTY RIGHTS, MEDIA & TECHNOLOGY LAW PRACTICE TRAINING FOR LAWYERS:�1. Nigeria’s IP Strategy & Policy�2. Geographical Indications of Origin

By

Professor Bankole Sodipo Ph.D (London), SAN, FCArb

The Nigerian Bar Association, Institute of Continuing Legal Education (NBA-CLE)

April 18-20, 2023

b.sodipo@gosodipo.com

sodipob@babcock.edu.ng

08023198641

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OUTLINE

• Greetings/Protocols.
• Outline of IP and Allied rights (What is IP Law?).
• Pervasive Role/Impact of IP.
• Why IP Strategy and Policy? (Law and the Street/Books)
• Possible impact of IP Strategy and Policy.
• Geographical Indications of Origin.
• IP: the regimes of law that seek to protect creativity, inventiveness and brands by granting certain persons transferable property type rights through which they can stop third parties from copying their creativity, inventions and brands.

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TYPES OF IP & ALLIED RIGHTS

• Copyright, Trade Marks, Designs, Patents, Plant & Animal Variety, Confidential Information/Trade Secrets, Traditional Knowledge
• Copyright protects: literary, artistic & musical works, sound records, films, broadcasts, 2022 Act (No R)
• Trade Marks protect: logos, brands, the get-up of products, 1965 Act, Merchandise Marks Act (R + No R)
• Designs protect: new shapes/textile designs/electrical circuits, Patents & Designs Act 1970, (PDA) ®
• Patents protect: certain new/improved inventions, PDA 1970 ®
• Plant & Animal Variety: supposed to protect new species of plants or animals, Plant Variety Protection Act, 2021 ®
• Confidential Information/Trade Secrets: secrets & information shared in confidence (common law + constitution) (No R)
• Traditional Knowledge protects: folklore & hopefully “knowledge passed from grandmas and grandpas” (No R)
• Business Facilitation Act 2022 & Nigeria Start-Up Act, 2022

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PERVASIVE ROLE/IMPACT OF IP

• What is the impact of creative works, inventions, brands (IP)?
• Case Study: SMART PHONE (SP).
• SPs are branded - ™ TRADE MARKS.
• The inventions or Apps that run on SPs – PATENTS.
• SP content (music, videos, art, pictures, films, broadcasts) - © COPYRIGHT
• Data and Financial Transactions on SP - COPYRIGHT, CONFIDENTIAL INFORMATION, PRIVACY.
• New Design of SPs – INDUSTRIAL DESIGNS.
• Logos/brands of various Apps on SP – TRADEMARKS.
• IP governs the extent to which third parties can exploit the rights without permission.
• IP is property – Like real property, can be licensed, assigned, used as security and bequeath.
• IPR owners have exclusive rights to stop 3^rd parties from dealing with rights.
• Most IP only last for a period.
• Patents = 20 years (yearly), Designs = 15 years (5x3 terms), © up to 70 years plus life of author, Trade Marks continuously renewable.
• Inventor or creator may not be owner of IP (transfer by law/contract).

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�WHY IP STRATEGY AND POLICY?�

• Policies: guiding principles that help decision, stating intentions, methods and identify goals, objectives, etc.
• Strategy: Initiatives pursued to achieve goals.
• Strategy is the foundation for success.
• Lawyers, Law firms and Law departments in corporations (& individuals), must have policies and strategies to achieve their goals.
• You cannot develop a strategy without identifying goals and doing a situational/baseline analysis or SWOT analysis on the IP, creative and innovation system.
• SWOT: strengths, weaknesses, opportunities and threats.
• A National IP Strategy and Policy does this for a nation.
• The NBA must do IP Strategy/Policy for lawyers: How lawyers can be big players and earners in IP media and Technology.
• Are we being consulted by relevant stakeholders? Are we earning? Do we have the capacity?

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ROAP MAP TO NATIONAL IP STRATEGY AND POLICY

• Work on the National Intellectual Property Policy and Strategy, started in 2020, arising from the collaboration between the Federal Government of Nigeria (FGN) and the World Intellectual Property Organization (WIPO).
• The process consisted of two phases. Phase I of the project, which was undertaken in 2020-2021, comprised the preparation of an inception/preliminary IP audit report to establish the status of IP country wide.
• The IP Audit Report examined the state of the IP system in Nigeria, focusing on the interface between the use of the IP system and the economic development of the country, through innovation and creativity.
• The Audit exercise also examined existing legal, administrative and enforcement structures related to IP as well as national policies and strategies related to economic, social and cultural development, pointing out weaknesses, strengths and opportunities, and proposed measures to strengthen the institutions.
• Phase II of the project, which started in January 2022, entailed the elaboration of the IP Strategy based on the findings and recommendations of the Audit report.
• Audit report findings were reviewed with focus group discussions with stakeholders, meetings with relevant senior government and policymaking officials and institutions.

Vision, Mission and Strategic Objectives of the National IP Policy and Strategy�

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NATIONAL STARTUP ACT, 2022 & IPR

• S.3 established the National Council for Digital Innovation and Entrepreneurship
• 31(1) The Council acknowledges the importance of intellectual property rights towards the growth and development of a startup.
• 31(2) As part of its objectives, the Secretariat shall ensure that holders of intellectual property rights are encouraged to exploit these rights and shall take steps towards assisting them in internationalising and commercialising their rights.
• 31(3) The Secretariat shall collaborate with the Nigerian Copyright Commission and the Trademarks, Patent and Design Registries, in ensuring that they — (a) designate a separate section on the Startup Portal to ease registration of intellectual property for labelled startups ; (b) provide assistance to labelled startups for facilitating the application for grant or revocation of patents and institution of legal action for infringement of any intellectual property rights; and (c) facilitate assistance to labelled startups for the filing and registration of their trademarks and patents at the international level.
• 31(4) The Secretariat shall further collaborate with the Nigerian Copyright Commission and the Trademarks, Patent and Design Registries to ensure that registration and protection of intellectual property of labelled startups are seamless, expedited and in accordance with the provisions of this Act.

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GEOGRAPHICAL INDICATIONS: (A FORM OF TRADE MARK)

• Recently, there have been copies of products with the following geographical indications:
• "Ijebu Garri“, "Aso Oke”, "Adire“, Ofada Rice“, “Ose Nsukka”
• Geographical indications (GIs) are marks that identify a good as originating in the territory of a country, or from a region or locality within that territory, where a given quality, reputation, or other characteristics of the good is essentially attributable to its geographic origin.
• In order to function as a GI, a sign must identify a product as originating in a given place.
• A geographical indication right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. (WIPO/USPTO)

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GEOGRAPHICAL INDICATIONS II

• However, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.
• Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
• “Indications of source includes ‘all expressions or signs used to indicate that a product or service originates in a given country or group of countries, region or locality’.
• Bodenhausen: appellations of origin are a species of the genus ‘indications of source’ and are ‘characterized by their relationship with quality or characteristics derived from the source’.
• The qualities, characteristics or reputation of the product should be essentially due to the place of origin and suggests a clear link between the product and its original place of production.

GEOGRAPHICAL INDICATIONS III

• 9. (1)(d) TMA: In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register it must contain or consist of at least one of the following essential a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.
• 43(1) TMA: A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, method of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A or the register in respect of those goods in the name, as proprietor thereof, of that person: Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified.
• Should GIs be part of a new Trade Marks Registry or stand alone?

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• THANK YOU

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