http://ipkitten.blogspot.com/2022/03/guest-post-nigerias-quest-for-its-own.html
Last month, members of the Nigerian Technical Working Group on Geographical Indications met to consider their first draft of a bill for the protection of Geographical Indications. Katfriend, Ifeanyi E. Okonkwo attended the meeting and now reports on how it went and what should happen next. Here is what Ifeanyi says:
Nigeria’s quest for its own statute for the protection of Geographical Indications gains momentum
by Ifeanyi E. Okonkwo
In April 2021, the Intellectual Property Rights and Innovation Project in Africa (AfrIPI) organised a high-level public sector workshop on geographical indications (GI) and following the workshop, the Nigerian Technical Working Group (TWG) on GI was established. The TWG was tasked with the responsibility inter alia to undertake a study of various GI laws across several jurisdictions and to produce a GI draft law that takes cognisance of the unique contexts of the Nigerian environment whilst meeting global standards.
A Broad Strategy
The TWG was made up of various stakeholder institutions including the Federal Ministry of Agriculture and Rural Development, the Federal Ministry of Industry, Trade and Investment, the Nigerian Export Promotion Council, the Ministry of Justice, the Nigerian Bar Association represented by the Intellectual Property Committee of the Section on Business Law, and others. The TWG was given 7 months from August 2021 to draft a sui generis GI law for Nigeria.
The TWG split the task across its members. While some members were assigned the task of surveying GI laws in the EU and the UK, others focussed on the US GI law and some on the GI laws, bills and regulations of other African countries such as Morocco, South Africa, Kenya, and Rwanda. Each ‘task group’ presented their key findings and the TWG collated all the pieces into one agreeable form, taking note of the differences and benefits. The ultimate draft needed to be evaluated and a conference was due.
On 17-18 of February 2022, AfrIPI in partnership with Africa International Trade and Commerce Research (AITCR), hosted a National Conference on Creating Legal and Institutional Frameworks for Geographical Indications at the Hilton-Transcorp in Abuja, Nigeria. The conference which was a hybrid event met a large attendance by various indigenous communities, institutions, IP scholars, lawyers, government officials, and the like. Champions and manufacturers of notable GI products in Nigeria like Sokoto goats’ skin, Ijebu garri, skin hide of Kano, Kilishi of Northern Nigeria, Yaji (dry pepper), Nsukka Yellow pepper, palm wine, palm oil, and many more, were also in attendance.
The AfrIPI project on GI in Nigeria was largely funded by the European Union Intellectual Property Office (EUIPO) though there were contributions from the Nigerian Export Commission and a few other stakeholders.
Key Highlights of the GI Bill Draft
Part I of the Draft dealt with preliminary issues like the definition of GI, appellation of origin, goods, indication, etc. The Draft does not include “services”, although it captures the same definition of goods as contained in international instruments. At the conference, stakeholders, including this writer, lamented the need for the inclusion of services to extend protection to Nigeria’s unique services like herbal healing methods, and crafts.
Part II covers the scope of application. The scope is quite broad as it covers agricultural goods, non-food agricultural goods, natural goods including rock and mineral resources, wildlife plots, et al; handicrafts and industrial goods, agricultural products and inland marine fisheries, hunting products, products derived from animals without the use of special preparation or preservation, and products of vegetable origin. Also, the appellation of origin falls within the scope of protection. Indications falling outside the scope, or contrary to public order and morality, or deceptive indication, or a name that has become generic in Nigeria, are excluded from protection.
Part III proposes a new Nigerian Geographical Indication Registry which shall be domiciled in the Federal Ministry of Industry, Trade, and Investment. The Registrar shall be appointed by the said Minister of Industry, but the Registrar must possess a master’s degree in IP law or International Trade Law, International Economic Law or related field and must have a minimum of 10 years’ experience including experience in the development, implementation, and management of GI at national and international level. It would appear that the broad tasks of the Registrar which includes the facilitation of international registration of Nigerian GI, informed the reason behind the high-level qualification and experience of the Registrar.
Also, within Part III, a Technical Evaluation Expert (TEE) is proposed to be established to assist the Registrar in its functions. Their major function is to examine the scope of goods that GI shall apply to, make policy recommendation, give technical advice to the Registrar, and perform any other function given by the Minister.
A GI Board will be established with representations from the Ministry of Industry, Trade and Investment; the Federal Competition and Consumer Protection Commission, the Ministries of Agriculture, Foreign Affairs, Culture & Tourism, the Nigerian Export Promotion Council, Farmers’ Association, Manufacturers Association of Nigeria, Chambers of Commerce, Faculty of Law of Universities offering IP law, and other relevant ministries. The Board is saddled with the function of advising the Minister on major appointments, but no other function or power was created.
The Register of GI is to be the evidence of all matters authorised by the GI law. A copy of an entry in the register or extract certified by the Registrar shall be admitted in evidence by any Court without further proof.
Part IV contains the general process for application to register GI. These processes are not alien to the general process for applying to register GI in other jurisdictions. The right to apply is subject to an association of persons or producers or any organisation established by or under any law, representing the interest of the producers of the concerned goods in the geographical area. Homonymous registrations shall only be authorised in practical circumstances that ensure equitable treatment of producers.
The Registrar is given 90 days within which to examine an application. The number of days may appear too long, but where the Registry is inundated with applications and faced with the examination and verification of these applications, it becomes imminently clear that the period is too short.
After examination, publication in Federal Gazette or 2 national dailies will be made. Opponents have within 2 months to oppose an application from the date of publication. There are three grounds upon which oppositions may be made:
a. That an applicant is not entitled to file the application
b. That an application contains a material misrepresentation and
c. The contents of the application do not comply with the Bill or Regulations.
Within 1 month of service by the Registrar to an applicant, such applicant may submit a counterstatement to be served on the opponent. Should the applicant fail to do so within 1 month, the application will be deemed abandoned. Where the opposition period has elapsed without opposition or with opposition decided in the favour of the applicant, unless the Federal Government otherwise directs, the Registrar shall register the application. [Is this somewhat like the Attorney-General being authorised to consent to incorporation of companies limited by guarantee (under the old Companies and Allied Matters Act) or having the Attorney-General issue directives to the Nigerian Copyright Commission regarding registration of Collective Management Organisations under the Copyright Act? How would this work in practice?]
The draft stipulates that GI registered shall last for 10 years and may be renewed every 10 years subsequently, otherwise the same shall be removed from the register.
GI registered in a foreign country shall be protected with clear evidence of eligibility for protection under the law of that country and it should have been in continual use up to the date of application for its registration in Nigeria.
Part V deals with the usual rights conferred by GI registration (the right of exclusion and economic gain) as well as what constitutes infringement (indication by unauthorised user). However, it is stipulated that ‘nothing in the section shall be deemed to affect the right of action in respect of an unregistered geographical indication’. [This sounds like a relic of Nigerian trademark law where unregistered trademarks are protected under the common law doctrine of passing off. In the case of GI, how would compliance with conditions of production be ascertained?]
Part VI provides for the use of signs like ‘PGI’ to show Protected GI. The Registrar of Trade Marks is precluded from registering GI goods or class or classes of goods, where there is the likelihood of confusion as to the true place of origin of such goods or class or classes of goods. Pre-existing trademarks that fall within similar criteria are protected.
Part VII creates an ‘Appellate Board’ to resolve disputes relating to GI. The Board shall constitute 4 lawyers and 3 non-lawyers all knowledgeable in GI law. Where a party(s) is dissatisfied with the decision of the ‘Appellate Board’, recourse can be made to any Alternative Dispute Resolution (ADR) mechanism or the regular court(s).
Application for cancellation, rectification or correction of GI is allowed under Part VIII. Part IX establishes a GI Development Fund to aid the smooth running of the Registry. Part X deals with general offences and penalties ranging from imprisonment between 6 months to 3 years or a minimum fine of N5million (approximately US$12,000) except the courts finds otherwise for special reasons. Other remedies include damages, delivery-up, destruction, and erasure.
Next Steps
Although experts have applauded the process and production of the Draft, there are a few key issues that need to be evaluated. These issues include a deeper reflection on whether the Federal High Court or State High Court should have jurisdiction [Under the Nigerian Constitution, the Federal High Court has exclusive jurisdiction over intellectual property matters]; a synergy or collaboration to include the local governments and state governments in the GI process; and more ways to include and protect the interest of the local communities.
It is expected that the TWG will reflect on these concerns before preparing a final draft to be sent to the Ministry of Justice. Thereafter and if approved, the draft will be sponsored to the National Assembly as an Executive Bill.
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