INTA’s Designs Committee, Nigerian Registry Set Plan for Design Examination

Members of INTA’s Designs Committee met with the registrar and chief assistant registrar of the Nigerian Trademarks, Patents and Designs Registry on June 15 to discuss design examination practice. Going forward, the two sides will look to identify, prioritize, and agree on possible areas for harmonization of design practices, including possible changes to the current law.

Registrar Stella Ezenduka presented an overview of the Patents and Design Act Cap P2 LFN (laws of Federation of Nigeria) 2004, which was originally enacted in 1971. Chief Assistant Registrar Jane Igwe outlined the design examination practice that has developed in Nigeria over the years, sharing the following notable highlights:

• Designs must be novel and intended to be multiplied through an industrial process;
• Designs must not be contrary to public order or morality;
• Designs must not cover works of sculpture (other than casts or models used as patterns to be multiplied by any industrial process), wall plaques and medals, or printed matter of a literary or artistic character;
• Nigeria has no classification system for designs, as designs for all products may be registered (although textiles are subject to slightly different rules); and
• Upon filing, the Registry carries out a formal examination to ensure compliance with administrative formalities and a substantive examination to confirm novelty/originality with existing designs.

INTA Designs Committee Chair Christian Spintig (Heuking Kuhn, Germany) gave an overview of INTA, its 143-year history, and its relatively recent focus on designs through the Association’s Designs Committee.

Bruce Longbottom (Eli Lilly and Company, USA), chair of the Design Law and Practice Subcommittee of the Design Committee, explained that the Subcommittee focuses on design laws and examination/registration practices of intellectual property offices around the world and submits comments when appropriate to advocate for improvements and harmonization.

On the issue of harmonization, Mr. Spintig relayed that INTA has published Guidelines for Examination of Industrial Designs, which are international in nature and reflect consensus from design practitioners in many countries. The Guidelines were updated by the Designs Committee and approved by INTA’s Board of Directors in May.

Subcommittee member Irmak Yalciner (Yalciner Patent and Consulting, Turkey) presented an overview of the Guidelines, which are available as a reference document, particularly for industrial property offices. She highlighted the following key components:

• Use of the Locarno Classification of products;
• Use of visual disclaimers to show features for which protection is not sought using broken lines, blurring, color shading, and boundaries;
• Not requiring a minimum number of views of a design;
• Allowing third-party searching of designs that have been registered or published on a free-of-charge basis;
• Accession to the Hague Agreement for Registration of Industrial Designs;
• Allowing dynamic views such as 3D digital representations and video files to be filed as an optional representation tool, with search tools/database updated accordingly to include these kinds of representations and make them searchable; and
• Allowing registration of graphical user interfaces (GUIs), icons, fonts, and animations, as well as projected, holographic, and/or virtual/augmented reality (PHVAR) designs, and real or virtual interior designs.

INTA member Tolu Olaloye (Jackson, Etti & Edu, Nigeria) arranged and moderated the virtual meeting. She took the opportunity to highlight one similarity—an e-filing system—and several differences between Nigeria’s current design registration laws and procedures and INTA’s Guidelines. Highlighted differences included: free third-party searches, fast-track examinations, visual disclaimers, and application of the Locarno Classification system.

In discussing how INTA’s Guidelines can be adopted in Nigeria, INTA members and Registry officials noted that providing design searches for free would require government involvement, and that several of the Guidelines would require the Designs Act to be amended to accommodate those changes.

Looking ahead, INTA’s Design Law and Practice Subcommittee members plan to collaborate with their Nigerian colleagues on possible areas for harmonization of design practices. This will include exploring possible changes and improvements to the current law, keeping in mind that changes in design laws may take several years.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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