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PROTECTION OF INTELLECTUAL AND INDUSTRIAL                  PROPERTY

NATIONAL OFFICE OF TECHNOLOGY ACQUISITION AND PROMOTION (NOTAP)
The National Office of Industrial Property Act was promulgated in 1979 with the stated objective inter alia of monitoring, on a continuous basis, the transfer of foreign technology to Nigeria. The administration of the Act was entrusted to the National Office of Industrial Property, which was recently re-named as the National Office of Technology Acquisition and Promotion (‘NOTAP”). NOTAP concerns itself with examining the quality of imported technology with a view to determining its price and to check fairly obvious abuses. In other words, the principal concern of NOTAP is to register contracts/agreements, which deal with the transfer and acquisition of foreign technology. The obligation to ensure that proper registration is effected, is both on the licensor and licencee of such technology.

The categories of contracts/agreements which qualify for registration and/or are registrable as involving the “transfer of foreign technology” are described as those contracts/agreements whose “purpose or intent is, in the opinion of the National Office, wholly or partially for or in connection with any of the following purposes, that is to say –
(i) the use of trademarks;
(ii) the right to use patented inventions.
(iii) the supply of technical expertise in the form of technical assistance of any description whatsoever;
(iv) the supply of detailed engineering drawings;
(v) the supply of machinery and plant; and
(vi) the provision of operating staff, managerial assistance and the training of personnel.”

In order to prevent abuse and to discourage patent monopolies and transfer of obsolete technology, the Director of NOTAP may refuse to register any contract/agreement in which in his opinion:
•    “the price or other valuable consideration therein is not commensurate with the technology acquired or to be acquired”.
•    “where provisions are included therein which permit the supplier to regulate or intervene directly or indirectly in the administration of any understanding belonging to the transferee of the technology and are, in his opinion, unnecessary for the due implementation or execution of such contract or agreement”.
OR
•    “where the transferee is obliged to submit to foreign jurisdiction in any controversy arising for decision concerning the interpretation or enforcement in Nigeria of any such contract or agreement or any provisions thereof”.

In order to avoid the payment for worthless technology in hard earned foreign currency, it is specifically provided in the Act that- “no payment shall be made in Nigeria to the credit of any person outside Nigeria by or on the authority of the Central Bank of Nigeria or any licensed Bank in Nigeria in respect of any payments due under a contract or agreement mentioned in this Act unless a Certificate of Registration issued under the Act is presented by the party or parties concerned together with a copy of the contract or agreement certified by the National Office in that behalf”.

No obligation to register with NOTAP may arise if the fees related to the contracts are denominated in local currency, without any intention to remit the same. Similarly, there is no obligation to register technical or managerial agreements with NOTAP where these agreements relate to projects funded in the country by international finance institutions who usually provide their foreign exchange components.

General Rules Applicable to All Technology Transfer Contracts
To satisfy the evaluation criteria of NOTAP all technology contracts/agreements must exhibit the following features:
(i) They should include a provision whereby the recipient enterprise in Nigeria acquires explicit rights for the use and exploitation of the technology in question, and the period covering these rights should be clearly specified in the contract.
(ii) The process or products to be licensed should be clearly defined.
(iii) In cases where the Nigerian enterprise is acquiring the right to utilise a process, the concept of know-how should be clearly expressed and defined in the contract. In this connection, concepts such as “technical information” or “technical services' should only be treated as complimentary to the know-how.
(iv) When a technology contract involves various components, each would be evaluated separately and the corresponding remuneration determined, not only in order to ascertain the relative cost of each, but also to provide the basis for determining the licensor's responsibility concerning the performance of any of the elements of the technology package.
(v) In projects of special importance, the concept of a “net present value” would be introduced as a tool for evaluating the overall remuneration.
(vi) Where the main element of a contract relates to a technological process, the licensor is obliged to provide process performance guarantees, in order to enable all parties concerned to critically determine its adequacy. Whilst the process guarantees are to be covered by licensor's financial terms (i.e. bonds, etc.) the contract document itself must explicitly cover the rights for the use and exploitation of the technology in question, and the duration of these rights.
(vii) If the option to pay liquidation damages is available, there should be a provision for the Nigerian enterprise to exercise this right in an independent and unfettered manner.
(viii) To ensure a continuous flow of information between the licensor and licensee during the life of the contract, such a contract should provide for access to the licensor's plants and related research and development facilities.

Development of National Technology Capability (Manpower and Training)
Clauses should therefore be provided in Technology Agreement to ensure the employment, exposure and training of the appropriate and right caliber of Nigerian staff.

In all technology transfer agreement, NOTAP insists that due attention should be placed on the employment of Nigerians with relevant scientific and technological background to understudy the foreign experts with a view to taking over such responsibilities within the shortest possible time. It is therefore mandatory for overseas investors to submit a comprehensive Training Programme Management Succession Programme for Nigerians whilst processing their technology transfer agreements.

Consultancy Services
As a matter of deliberate policy, Government is of the view that consultancy services required to execute local projects should be obtained from Nigeria Consultancy firms. However, where the necessary expertise is not available, foreign consultancy firm may be invited to work together with a Nigerian consultancy firm in a subordinate capacity. Under current regulations, Consultancy Agreements should spell out the following details:
- Definite objectives of the contract;
- Detailed description of the scope of the work programme to be accomplished;
- The time table and targets;
- Time estimates for each task in the programme including training;
- A description of the project teams;
- A description of the management team;
- The fee estimates, usually based on man/hours;
- The billing procedure.

Technical Assistance
Payments for technical assistance would normally be covered through “know-how fees” which are themselves broadly determined as follows:

In situations when the subject matter of a contract covers technical know-how that can be assimilated by the recipient company over a short period of time; e.g. use of formulae, drawings, specifications, etc; payments on a continuous basis would not be accepted. Also not acceptable are limitations that may be imposed pertaining to their use except those pertaining to confidentiality.

As regards the use of non-patented know-how, NOTAP does not accept any restriction on the use of the said know-how after termination of the technology transfer contract:

For practical purposes, the evaluation of the amounts to be paid for technical assistance is the aggregate of the various sums of money that may be determined as adequate compensation for the following components of such assistance.
(a) Pre-Operational Phase
- Pre-investment studies.
- Technical assistance for the purchase of equipment.
- Design, fabrication, and supply of equipment and machinery.
- Technical assistance in the erection and installation of plant.
- Plant start up.
- Training of technical personnel in the above areas.
(b) Operational Phase
•    Assistance in the purchase of equipment, spares, raw materials, etc.
•    Quality control.
•    Assistance in the operation of the plant including repair and maintenance, efficient production, etc.
•    Technical improvements of processes and products.
•    Technical services to clients.
•    Training of technicians in licensor's or licensee's plants

Managerial Assistance
The kind and scope of these services would depend largely on the sophistication and size of the local enterprise. The expectation is that these services would be obtained over a specific period of time, covering the following matters amongst others:
- Planning and programming;
- Research and development activities;
- Inventory control and accounting;
- Financing and purchase;
- Promotion and marketing.

Managerial assistance services are evaluated having regard to the following:
a) A definition of the different kinds of services to be provided.
b) The provision of a training programme in the contract in order to ensure that the various functions of the enterprise can gradually be taken over by the licensee's staff.
c) Payments for these services are usually examined in relation to the economic benefits to the recipient company and the nation in general.
d) The responsibility and functions of the licensor must be well articulated in the contract.

Access to Improvements in Technology
As part of its requirements, NOTAP expects that provision would be made to give the local recipient access to improvements on the technology acquired during the period of the agreement.

Territorial Considerations
Under this heading, two issues deserve special attention. The first is the territory of manufacture, which is normally restricted to one country. In this connection, the degree of exclusivity (that is, the exclusive use within a territory) to be obtained should be clearly specified in the contract. The second relates to the territory of sales. As a general rule, the licensee should be allowed the right to export to other countries. A contract may not be accepted by NOTAP if it contains a total prohibition of the export of the products manufactured under licence.

Arbitration
In the case of commercial disputes, which are not taken to the regular courts, NOTAP expects that the manner of selection of the arbitrators and the procedure for arbitration must be clearly expressed in accordance with the procedures of the Arbitration and Conciliation Act of Nigeria.

Governing Law
Technology transfer agreement must state categorically that the governing law of such agreement shall be that of Nigeria . NOTAP is very insistent on this clause in order to minimise the difficulties that had been experienced in the past when some technology transfer agreements relating to business transactions in Nigeria were governed by foreign laws.

Duration
Under the provisions of the Act, the period of 10 years is stipulated as the maximum duration of an agreement. NOTAP will, however, register agreements with longer terms where:
(i) the technology proposed to be transferred is complex and it is proven to its satisfaction that the technology requires a longer duration for proper absorption, such as in Petro-Chemical Plants, Iron and Steel processing, Space and Computer Technologies;
(ii) it is internationally recognised that the technology involved is a rapidly changing one and that the transferee requires to be kept abreast of the frequent changes/developments to remain competitive; for example in electronics, computers and telecommunications businesses;
(iii) the licensee is granted the right to sub-license the technology over a period of 10 years:
(iv) it is considered to be in the national interest of Nigeria .
In practice, NOTAP usually approves a 3-year tenure for contracts, which may subsequently be renewed upon the expiry of the initial term.

Royalties and Other Technology Payments
The currently applicable rates of fees that may be approved by NOTAP are as follows:
a) Royalty - Royalty in respect of know-how, patents and other industrial property rights, ranges from 1% - 5% value.
b) Trade Marks – As a matter of policy, royalty payments for the use of foreign trade marks will not be allowed except where the trade mark is an internationally recognised one accompanied with licensed know-how, and the product is allowed by the licensor for the export market. In effect, a “Trade Mark Agreement” simpliciter would not be approved for royalty payments, whilst a “Trade Marks and Know-How Agreement” which does not preclude exports would probably be approved.
(c) Technical Services - Fees in respect of technical assistance/services range from 1% - 5% of net sales.
(d) Management Services - A management fee ranging between 2% - 5% of profit before tax is the norm. However, management services for projects where profit is not anticipated during the early years may attract a fee ranging between 1% - 2% of net sales during the first 3 to 5 years only. For the management of a hotel within an international chain of hotels - a basic or lump sum not exceeding 5% of turnover plus an incentive fee not exceeding 12% of Gross Operating Profit (“GOP”) is currently applicable. Other payments, which are internationally accepted within the hotel industry, may also be allowed. Our experience, however indicate that only hotels located in the economically disadvantaged areas of the country will attract the upper limits of the basic and incentive fees herein stated.
(e) Consultancy Services-lump sum payments are allowed in line with the international technology market prices, which are in themselves based on man/day or month rates taking into account the nature of services to be performed. However, all such payments may not exceed 5% of the total project cost.
The applicable man/day-month rates will, of course, take account of the complexity and the sophistication of the technological services to be rendered.
(f) Agricultural and Agro-Allied Projects - Payments for services in this sector is based on a lump sum amount in the initial years (i.e. gestation period) when no sales or profit are anticipated. However, after the gestation period, payments are often based on net sales value as in other sectors.
(g) Incentive Remuneration-Incentive remuneration is allowed in deserving cases where:-
•    the local value added is not lower than 70%;
•    the products are intended for the export market;
•    the benefit to be derived by the enterprise is considered desirable in the national interest.
(h) Renewals-Generally, payments in respect of Renewal Agreements attract lower remuneration. Such renewals, which are not automatic, are considered on merit by NOTAP based on its own monitoring processes and assessments.
(i) Definition of Net Sales-Net Sales shall generally be defined as “Net ex-factory sales price of the product exclusive of excise duties, and other taxes minus the cost of the standard bought out components and the landed cost of imported components irrespective of the source of procurement including customs duties, insurance and freight”.

Implementation Procedures of NOTAP
Having established the a foregoing, a summary of the various legal and administrative steps which are necessary for obtaining NOTAP registration is as follows:
(i) A duly completed NOTAP Application Form (viz. Revised Form NOIP 1 - 84) must be lodged with NOTAP by the recipient or transferee of the technology.
(ii) The said Application Form must be accompanied with the following annexure:
•    an application fee made out in a bank draft payable to the “Director, National Office of Technology acquisition and Promotion”;
•    the Memorandum and Articles of Association of the Company;
•    two certified true copies of the Agreement to be registered;
•    two copies of duly completed Questionnaire (viz. Revised From NOIP 2-84);
•    a copy of the relevant feasibility study;
•    annual audited accounts (if not a new company), and if it is a new company, a copy of the Certificate of Incorporation should be submitted as evidence thereof.
(iii) NOTAP then vets the Agreement in order to determine its conformity with its own evaluation criteria. In so doing, NOTAP is at liberty to request for additional and/ or more precise information about the nature, age and extent of relevance of the technology and services being transferred. This exercise may, at times, result in the amendment or re-drafting of some clauses in the Agreement.
(iv) Based on the complexity and desirability of the form of technology being transferred, NOTAP computes and advises the applicant of the fees payable for the use of the technology and the duration approved for the Agreement.
(v) When the Agreement is finally accepted by NOTAP (either in its original form or in an amended form) a “registration fee” as distinct from user fees becomes payable to NOTAP. For this purpose, Agreements are classified into two categories. For Category “A” (i.e. contracts involving a total payment below N500,000 for the duration of the Agreement) the approval fee presently payable is one thousand naira (N1,000). For Category “B” (i.e. contracts involving a total payment above N500,000 for the duration of the Agreement) the approval fee at present payable is two thousand naira (N2,000).
(vi) Finally, NOTAP then issues a “Certificate of Registration” to the applicant accompanied with a copy of the Agreement certified by it.

LAWS RELATING TO THE PROTECTION OF INTELLECTUAL PROPERTY

General Principles
Nigeria is still a major importer of technology and finished goods. In this circumstance, its citizens have of necessity become familiar with several international brand names, trademarks and industrial designs, etc. which sometimes are unfortunately being imitated by unscrupulous businessmen. For example, the authors have not only observed the false labelling of goods as regards “country of origin” but also the infringement and “passing-off” of internationally well-known trademarks and designs and the illegal reproduction of cinematograph films, phonographic recordings and books. In some instances, third parties have even succeeded in proprietary rights and a priority claim over international trademarks and designs, which did not belong to them.

Following the market practice in most other countries, the Nigerian laws permit a prospective foreign investor to protect his propriety interest in any trademarks, patents, design or copyright even before completing the other formalities for establishing a business in Nigeria. Thus it is in fact possible and often advisable for a manufacturer and exporter of goods into Nigeria to have his trademarks, designs or copyright registered in the country without any intention of establishing a formal business vehicle in Nigeria as this is not a legal requirement or pre-condition for registration. Nigeria is a member of the Paris and Berne Convention.
The various categories of intellectual property law are now examined and the procedures for registration outlined.

Trademarks Act: General Principles
The essence of a “trademark” i.e., a label, name, numeral, signs, etc.) is to establish a connection “in the course of trade between certain goods and a person having the right, either as a proprietor or registered user, to use the mark with or without indication of his identity” on the product to which the mark is affixed. The product labels, which must indicate the origin of the goods, also represent acknowledged quality of some given products and the goodwill of their manufacturers or producers.

Trademarks may be registered or unregistered. Right in an unregistered trademark may be acquired by use and may exist independently of registration in which case there can only be a “passing-off” action for its infringement.

However, the proprietor of an unregistered trademark may oppose the registration of a similar trademark. The basis of this action is a proprietary right not so much in the name itself, but in the goodwill established through usage of the name in connection with the complainant's goods. The party objecting, therefore, must show that the name or mark in question has become associated with his goods, that a reputation or goodwill has attached to them under that name or mark and that use by the person seeking registration of a similar name or mark is likely to cause confusion resulting in damage to the reputation or goodwill of the complainant.

In Nigeria, the Trademark Act indicates what marks are registrable, and provides that a registrable trademark must contain or consist of at least one of the following essential characteristics:
- the name of the company, individual or firm represented in a special or particular manner;
- the signature of the applicant for registration, or some predecessor in his business;
- an invented word or words;
- 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 surname;
- any other distinctive mark but a name, signature, word or words other than such as fall within the description in the above paragraphs (i), (ii), (iv) shall, not except by order of a court, be deemed a distinctive mark.

In addition to the above, it should be noted that trademarks are registrable in Nigeria in different classes. The law, for example, provides that, a trademark must be registered for particular goods or classes of goods. The applicant must in his application, state the goods included in each class separately. If the applicant desires to register the same mark for goods falling within the ambits of more than one class, he must make different applications in respect of each class. Each such application is treated for all purposes as separate and distinct.

Whilst, in theory, speculative trademark registrations reflecting no direct relationship for use on specific goods are discouraged, the current universal practice of granting franchise and licensing rights for the use of well known trademarks on diverse goods recommends that proprietors of such trademarks should endeavour, as a protective and anticipatory measure, to effect registration in the country of their proprietary trademarks in diverse classes of registration.

Qualification of Act as a Trade Mark Agent
In several jurisdictions, the capacity to act as a trademark agent is unqualified. However, in Nigeria , the legal expectation is to engage the services of a lawyer to act as “trademark agent” with regard to the registration of a trade mark and other dealings or transactions on the same. In order to ensure probity and that only persons with good character are appointed as trademark agents, it should be noted that:

“The Registrar shall not be bound to recognise as such agent any person who has been proved to him to have been guilty of conduct discreditable to a trade mark agent or who has been convicted criminally or whose name has been struck off the Roll of Legal Practitioners or (during the term of his suspension) any person who has been suspended from acting as a legal practitioner”.

In practice, proprietors of trademarks have had little or no difficulty in finding competent lawyers to appoint as trademark agent.

Future Trends of Trade Marks Registration
At the time of going to print, certain revisions to the current Trade Marks Act are being contemplated. A significant revision is the possible introduction for registration of “service marks”. In effect, signs which may constitute a trade mark may, upon the effective commencement of the proposed law, include “service marks” which are defined as “the shape, form, presentation or packaging of goods or services”.

Patent and Designs Act
Patents
The word “patent” denotes a grant of letters acknowledging a right or monopoly in respect of an invention. When a patent is granted, the “Letters Patent” are delivered to the patentee, who is the person entered on the Register of Patents as the proprietor or grantee. A patentee is thereby granted a right in law to prevent others from making, using or dealing in his invention whether by sale, importation or hire. A patent for an invention does not confer upon a patentee any right to manufacture, which he does not already hold. What the “Letters Patent” confer is the right to exclude others from the commercial exploitation of a particular invention.

The actual procedure for application for “Letters Patent” is quite simple and straightforward. The applicant (assisted by his/its agent - usually a solicitor in Nigeria) is obliged to complete some Statutory Forms, which may be obtained from the Patents and Trademarks Registry, and to return the same accompanied by documents relating to the invention. The Application Form and relevant supporting documents are thereafter referred to an “examiner” who investigates the novelty of the invention claimed and establishes whether or not an earlier claim had been made on it. The examiner's report is not binding on the Registrar but only assists him in arriving at a decision. If the request for a patent is accepted, “Letters Patent” are granted to the applicant or joint-applicants and sealed with the seal of the Registrar of Patents upon payment of the prescribed fees.

Industrial Designs
The word “design” as used in this context means or refers to features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appear to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which the article made in that shape or configuration has to perform.

The law in Nigeria as regards designs now goes further to provide that any combination of lines or colours or both and any three dimensional form, whether or not associated with colour, is an industrial design if it is intended by the creator to be utilised as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result. Like patents and trade marks, the right of registration of an individual design is vested in the statutory creator, that is, the person who, whether or not he is the true creator, is the first to file or validly claim a priority for an application for registration of the design, unless the creator was acting on behalf of another person for good consideration in which case that other person is treated as the proprietor.

The generally accepted view is that a mere importer of a foreign design is not its creator for this purpose, though it is not clear whether a mere importer may not be a proprietor by acquisition. Registration of an industrial design confers upon the registered owner the right to preclude any other person from reproducing the design in a manufactured product; or else, in importing, selling or utilising the design for commercial purposes. Reproducing the design in any miniature way is also prohibited by law. The protection provided by the Nigerian law is effective in the first instance for 5 years from the date of application for registration and two subsequent periods of 5-year renewals making a total of 15 years.

Copyright Act
The Copyright Act promulgated in 1988 makes provisions for the definition, protection, transfer, penalty for infringement of the copyright in literary works, musical works, artistic works, cinematograph films, sound recordings, broadcast and other ancillary matters. In theory, a copyright registration prevents the copying or reproduction of physical material existing in the fields of literature and the arts. Its objective is to protect the writer or artist from the unlawful exploitation of their creation but does not give a monopoly to the reproduction of ideas or to any particular form of words or design.
 

 

 

ที่มา / Source: Nigerian Investment Promotion Commission (NIPC),
www.nipc.gov.ng

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