By Amaka Ezeno, MCLArb
In any civil setting, there is a need for effective administration structure for purpose of achieving its objectives. Thus, the domain of industrial design is also administered by the appropriate authorities for effective running of the sector.
Industrial designs are “any combination of lines and/or colours and three-dimensional form whether or not associated with colours, 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.” Industrial designs are the aesthetic parts of an article used for the purpose of influencing buyers’ decision. Industrial designs are protected through registration with the Nigerian Patents and Designs Registry. The Patents and Designs Act governs the registration of industrial designs.
REGISTRATION OF INDUSTRIAL DESIGNS
An industrial design is registrable if it is new and not contrary to public policy. Newness entails that the design has not been made available to the public before an application for registration is filed at the registry. The requirement of newness will be defeated if the design has been advertised or if its difference with another design is not significant.
The exception to this condition is where the creator could not have known that it had been made available to the public before the date of the application, or where the creator had exhibited the design in an official or officially recognized exhibition within the period of six months preceding the filing of the application for registration.
1 THE MINISTER OF TRADE AND INDUSTRY
The Minister of Trade and Industry is the principal officer charged with the responsibility for industrial designs. He or she is appointed by the Federal Civil Service Commission. Under section 28 of the Patents and Designs Act, the minister regulates the way entries are made and maintained. Apart from the Minister’s power to make rules, he may also do the following:
- The minster under section 23(6) of the Patents and Designs Act, if he is satisfied that it is in the interest of Nigeria and its economic development to do so, by order in the Federal Gazette may provide that contractual licences shall, in so far as they involve the payment of royalties outside Nigeria, be invalid without the approval of such authority specified in the order.
- with a view to the fulfilment of a treaty, convention or other international arrangement or agreement to which Nigeria is a party, he may declare by order in the Federal Gazette that any country specified in the order is a convention country. This power is vested on the Minister by section 27(1) of the Patents and Design Act.
- by order in the Federal Gazette, he may also provide that compulsory licences should be granted for certain patented products and processes (or for certain categories thereof) declared by the order to be of vital importance for the defence or the economy of Nigeria or for public health.
- He may, under section 28(6) of the Patents and Designs Act, also direct the Registrar to publish from time to time a journal to be known as the Patents and Designs Journal in which shall be published all such matters as are required by this Act to be published or notified.
- If the Minister is satisfied that it is in the public interest to do so, he may authorise any person to purchase, make, exercise or vend any patented article or invention for the service of a government agency in the Federal 399 Republic.
- He may with the approval of the National Council of Ministers, make rules establishing schemes to encourage inventive activity. Such schemes may include provision for the payment of grants to persons who have discovered or perfected or appear to have reasonable prospects of discovering or perfecting, important inventions which cannot be further developed for financial reasons.
- THE REGISTRAR OF PATENTS AND DESIGNS
The registrar acts under the control and direction of the Minister. His powers and duties as provided by the Patents and Designs Act include:
- Receiving and processing registration of patents; section 15(1) of the Patents and Designs Act.
- Examining such applications as to their conformity with the requirements of newness and not being contrary to public policy. See section 16(1) of the Patents and Designs Act.
- Under 16(2) of the Patents and Designs Act, the Registrar has the power to grant,
- where the examination shows that a patent application has satisfied the statutory requirements, the patent as applied for without further examination.
- Entering the particulars of the grant in the Register and causing to be published in the Federal Gazette a notification of the grant.
- Maintenance of the Register of Patents and making entries therein in whatever manner appears to the Registrar as most suitable and convenient.
- Correcting any clerical error in an entry in the Register, although, he will before doing so, give the person to whom the entry relates an opportunity to make representation.
- Publishing of Patents and Designs Journal if the Minister directs him so to do.
- Receiving and processing application for the registration of the title of any person becoming entitled by assignment, transmission or operation of law to a patent or to a patent application or becoming entitled as mortgagees, licensee or otherwise to any interest in a patent.
- Registering the cancellation and surrender of patents.
- Amending, if he thinks fit, any document or drawing relating to an invention. He may also rectify any irregularities in procedure on such terms as he may direct.
- Giving a certificate, where such a certificate is required for the purpose of obtaining a patent abroad, or for any legal proceeding, or other special purpose as to any entry, matter or thing which the Registrar is authorised to do. The certificate must specify on the face of it the purpose for which it has been issued. See section 23(b) of the Patents and Designs Act.
- Processing the application for the grant of a compulsory license.
- THE COURTS
Generally, the court is not of one the administrative structures for the daily running of industrial designs, but it is involed, where necessary, to determine issues relating to industrial designs for the smooth running of the same.
They are the final arbiter on issues of conflict between the minister, the registrar and other interested parties like proprietors, etc. Section 251(1)f of the Constitution of the Federal Republic of Nigeria vests the Federal High Court with original jurisdiction with respect to matters relating to industrial designs.
In exercising its powers, the court can award damages, give an order for injunction, delivery up and/or account for profit. In the case of Controlled Plastic Ltd. v. Black Horse Industries Ltd, the court agreed with the plaintiff that its design of large Collander was new and that it had been infringed by the defendant, and therefore awarded damages.
Industrial designs are integral part of Nigeria’s commercial transactions. They serve to distinguish products as well as entice prospective customers. Thus, it necessitates effective administration as overseen by the minister, the registrar, and the court where and when required. This structure ensures a smooth filing and granting processes and provides a channel for complaint and dispute resolution.