New Trademarks Journal published amid covid-19 lockdown

• The Trademarks Registry has published its latest Trademarks Journal on 29 May 2020
• There are concerns around whether the rules applicable to the previous journal may also be applied to the latest one
• There is still a need to push for the full integration and application of technology to all areas of operations and processes of the registry

Following the gradual easing of the three-month lockdown restrictions in certain parts of Nigeria, the Trademarks Registry has successfully rolled out the Trademarks Journal Volume 1 No 3 of 29 May 2020.  The journal covers matters filed via the registry’s online platform.

Since the introduction of the electronic filing system for trademarks, patents and designs in 2012, the online platform has proven to be the most expedient means of prosecuting trademark applications in Nigeria, and the ongoing covid-19 pandemic has reaffirmed this. With government agencies doing their best to adhere to the World Health Organisation and Nigeria Centre for Disease Control guidelines for preventative care (which means that, at time of writing, only officers from Cadre 14 and above are required to be at work), there is a dearth of personnel to attend to the day-to-day requests of customers. Adding to the challenges faced by the registry, there is a huge backlog resulting from the lockdown, when movements were severely restricted and there was almost zero attendance at the registry. The new journal was thus a welcome development, as it was seen as a way of reducing the backlog by moving qualifying applications along to publication.

Prior to the lockdown, the Trademarks Registry had released the Trademarks Journal Volume 1 No 2 of 28 February 2020, with the opposition deadline being 28 April 2020. Following the lockdown, all opposition proceedings at the registry were adjourned and opposition hearings were suspended. All payments for opposition-related matters were, however, not suspended, and the deadline for filing oppositions was strictly enforced. Opponents were encouraged to pay for the notices of opposition and adhere to the deadlines. The rationale for this was that the marks covered by the journal of 28 February were filed using the electronic system, rather than the alternative manual/IPAS system. It did not seem to be a valid argument that the deadline for filing oppositions fell within the lockdown, the most important consideration being the mode of filing the applications - that is, electronically.

Whilst this meant that payments for notices of opposition could be made online, a lacuna seems to have been created regarding how the opposition documents/processes may be submitted. It appears that notices of oppositions and other opposition documents paid for during the lockdown will now have to be submitted physically with proof of payment. The electronic platform has not been configured to accept all of these processes and this issue must be addressed.

Arguably, one must commend the leadership of the Trademarks Registry with regard to the publication of the Trademarks Journal and the unhindered access to the electronic platform during the lockdown. However, there is still a need to continue to push for the full integration and application of technology to all areas of operations and processes of the registry. Covid-19 has underscored the importance and urgency of this need.

With the recently released journal and the opening of the registry to agents and members of the public, one of the questions being asked is: “is it safe to assume that there is a return to the status quo (that is, of manually submitting opposition documents at the registry)?” There are concerns around safety, especially with the increased level of human contact. There are also concerns around whether the rules applicable to the 28 February 2020 journal may also be applied to the latest journal. Can notices of opposition be paid for and the documents submitted when the applicant deems it safe to physically go to the registry? With the responsibility for personal safety lying on individuals, will the registrar issue a deadline for submitting the opposition documents, and what happens in the case of applicants or agents who would rather stay away from the registry until the all-clear is given by the government? Is the deadline similar to that applicable to the 28 February journal?  

The pandemic has shown that each individual, industry or service provider must learn to adapt. For the Trademarks Registry, a ‘new normal’ would entail embracing the electronic system fully, and not just for payments. The current crisis presents it with an opportunity that should not be missed.