New online filing system - the good, the bad and the ugly

Nigeria

The procedure for the registration of trademarks in Nigeria has always been long and tedious due to the fact that registration was a manual process. Therefore, the introduction of an automated registration procedure was eagerly awaited.

The commencement date for the pilot test of the online registration system was initially scheduled for April 15 2011, but the test was later shelved for logistic reasons. The system finally became a reality on July 16 2012.

The good:

  • Prior to the commencement of the test, the registry embarked on the process of developing a database containing all its official files.
  • The creation of the database was preceded by the cumbersome process of gathering data, scrutinising the manual procedures, building capacity and acquiring the technological skills required for the task.
  • An individual assessment of the registry’s staff was carried out, and employees were then deployed to different areas of the newly reformed registry in order to ensure optimal productivity.
  • In a bid to stop shady practices by unscrupulous individuals, the registry put in place an accreditation procedure for agents, firms or other interested parties seeking to access the online system. Upon fulfilment of the accreditation requirements, the accredited person or firm is granted a unique access code, through which it can access the website at all times.
  • Information on trademark practice, the registry’s involvement in international institutions and organisations, and seminars and workshops will be included in the registry’s website and accessible by accredited agents.
  • There is a 24-hour period for filing online.
  • The government will have access to relevant statistics in order to formulate policies.

The bad:

  • The payment of official fees was difficult, as agents had to go to the bank to effect payment (there was only one designated bank, which resulted in lengthy queues), and then scan and send the proof of filing to the registry. This problem has now been rectified with the introduction (on October 29) of the possibility of paying by ATM card.
  • It was impossible to make payment in the name of applicants which had the symbol ‘&’ in their names. This has now also been rectified.
  • It was impossible to file new patent applications and certain trademark applications.
  • Additional fees (referred to as ‘technology fees’) were introduced, which had the effect of increasing the amount of the filing fees.
  • It was difficult to access the online portal due to connectivity problems.

The ugly - a Lagos-based law firm gave notice of its intention to commence civil proceedings against the Registrar of Trademarks and the IT firm responsible for the online filing system, seeking a declaration that:

  • the abolition of the manual registration system was illegal, as it was made unilaterally and without statutory backing;
  • the compulsory electronic filing of applications is illegal and constitutes an oppressive restraint on trademarks owners and practitioners;
  • the requirement that agents be accredited is ultra vires the provisions of the law; and
  • the additional consultancy fees are also ultra vires the provisions of the law.

Manual filing was reinstated alongside online filing on Monday August 27 following a memo/directive issued by the Registrar, citing technical difficulties with the online filing system as the reason for the reinstatement. The action has now been put in abeyance.

Despite the difficulties encountered by the new system so far, it is believed that online filing is the way forward in Nigeria, and credit must be given to the Registrar for pushing ahead with it.

Chinwe Ogban, Jackson, Etti & Edu, Lagos 

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