More stringent procedures in trademark applications time limit to respond to official actions

The Nigerian registrar of trademarks (and patents and designs) is conducting a campaign to tighten up procedures throughout the registry. At a meeting held on Tuesday July 8 2014 between the registrar and agents, one of the measures announced concerned the time available for trademark applicants and their agents to respond to official actions (refusals or conditional acceptances) issued by the registrar after examination of an application.

Under the regulations, official actions are to be notified in writing and, unless, within two months, the applicant (or agent) applies for a hearing or makes a considered reply in writing, the application shall be deemed to have been withdrawn. For many years, that time limit has not been enforced and responses have been entertained after substantial delay. The registrar has now made it clear that responses received after the statutory term will be disregarded and the application treated as abandoned.

The regulations contain provisions for this time limit, like others, to be extended at the registrar’s discretion, and it is generally accepted law that an authority such as the registrar must actually exercise her discretion, and may not pre-determine that extensions of time will never be granted. Evidently also, pending applications where responses are already overdue will have to be considered on a reasonable basis.

The above points are under discussion with the registrar at this time. It is nevertheless noted for general information that, in future, extensions of time beyond the prescribed two months will at best be difficult to secure without very good reasons, and (predictably involving hearings) expensive as well.

To counterbalance the challenge described above, the good news from Nigeria on the IP front includes:

• A general strategy to improve the operations and records in the Industrial Property (Patents, Trademarks and Designs) Office.
• The enhancement of copyright protection. The IP Law does not expressly require registration of copyright. However, the statutory Nigerian Copyright Commission has been diligent in promoting its objects and policies, especially the rights of authors, and most recently by inaugurating and publishing the Nigerian e-Copyright Registration System.

Mac Spence, Spoor & Fisher, Jersey