What to protect:
Overview of Intellectual Property including
how to identify if you have IP that needs to
be protected
by
CHINYERE OKOROCHA
PARTNER, JACKSON,ETTI AND EDU
Presented at the Anadach Workshop on “The
Dynamic Role of Intellectual Property in Promoting
Innovation and Economic Development in Emerging
Markets”.
July 14th -16th 2015
WHAT IS
INTELLECTUAL
PROPERTY (IP)?
• Intellectual property (IP) is a legal field that refers to
creations of the mind: inventions, literary and artistic
works, and symbols, names, images, and designs
used in commerce
• Any product of the human intellect that is unique,
novel, non-obvious, and has some value in the
marketplace deserves protection under the law. This
includes ideas, inventions, business methods and
manufacturing processes
• Although the various types of IP are not physical,
they are intangible assets that are protectable and
can be monetized
TYPES OF INTELLECTUAL
PROPERTY (IP)
–
–
–
–
–
Trademarks
Patents
Industrial designs
Domain Names
Copyright
– Geographical
Indications
– Traditional Knowledge
– Trade Secrets
– Know How
All of the above are capable of protection and may be
commercially exploited
USP- Unique Selling Points of different Organisations
(what makes each one unique)
TRADE MARKS
• A trademark is a distinctive sign that identifies certain
goods or services produced or provided by an
individual or a company.
• The origin of trademarks dates back to ancient times
when craftsmen reproduced their signatures, or
“marks”, on their artistic works or products of a
functional or practical nature.
• Trademarks may be one or a combination of words,
letters and numerals. They may consist of drawings,
symbols or three dimensional signs, such as the
shape and packaging of goods
Examples of protected trade/service
marks
Non traditional forms of IP
• Smell marks (the smell of freshly cut grass
for tennis balls, smell of a perfume)
• Colour marks (the colour purple for
Chocolates- Cadbury)
• Moving images marks (the movement of a
car door opening, Lamborghini)
• Sound marks (the roar of a lion, MGM;
sound heard when a phone is turned on
e.g. Nokia Phone)
PATENTS
• A Patent can be defined as any new and useful
process or invention.
• It may be an improvement of an old process/product.
• It may also be a new use for an existing product.
• Protects Innovative And New Ideas not In the Prior
Art
• Strongest Of All IP Rights (And Most Difficult To
Obtain) except in Nigeria where there is no
examination as to the validity or otherwise of the
patent
• Valid for 20 years and renewable every year from the
filing date.
• Characteristics of a patent
–
–
–
It must be new or an improvement of an old invention.
It must involve an inventive step.
It must be capable of industrial application.
EXAMPLES OF PATENTS
COPYRIGHT
• A copyright can be defined as any original
work of authorship, fixed in any tangible
medium of expression and includes literary,
artistic or musical works
• Examples include, computer software,
pictures, sculptures, Stage Performances in
any form such as Chinua Achebe’s Things
Fall Apart’; Don Jazzy’s Live Performance,
‘Tyler Perry’ movie; ‘website pages, etc
• Literary, Artistic and musical works - 70
years from the death of the author from the
end of the year in which the author dies.
COPYRIGHT CONTD.
• Cinematography – 50 years after the end of the year in which
the work was first published
• Sound recording - 50 years after the end of the year in which
the recording was first made
• Broadcasting - 50 years after the end of the year in which the
recording was first made
Note: Works that fall under this category of Intellectual
Property need not be registered, Copyright automatically
subsists in them.
However, in Nigeria, the Nigerian Copyright Commission has a
notification system in place where owners may notify the
commission of the existence of their works. This is not
compulsory but advisable.
COPYRIGHT
• EXCEPTIONS
• Fair Dealing for purposes of research,
Educational purposes, private use, criticism,
review, reporting of current events.
• All of the above must be accompanied by an
acknowledgment of the title of the work and
its authorship.
EXAMPLES OF COPYRIGHTABLE
SUBJECT MATTER
Industrial Design
• An industrial design constitutes the ornamental or
aesthetic aspect of an article.
• A design may consist of three-dimensional features,
such as the shape or surface of an article, or of twodimensional features, such as patterns, lines or
colour.
• The design features must be applied to an article by
any industrial process or means of which the features
in the finished article appeal to eye.
What can be protected?
• Packages and containers, furnishing and
household goods, lighting equipment,
jewellery, and from electronic devices to
textiles. Industrial designs may also be
relevant to graphic symbols, graphical
user interfaces (GUI), and logos.
EXAMPLES OF INDUSTRIAL
DESIGN
TRADE SECRETS
• Confidential business information which provides an
enterprise a competitive edge
• Encompasses manufacturing or industrial and
commercial secrets
• The information must be secret
• It must have commercial value because it is a secret
• It must have been subject to reasonable steps by the
rightful holder of the information to keep it secret (e.g.
confidentiality agreements)
• Unauthorised use by persons other than the holder is
regarded as unfair practice and a violation of the trade
secret. Examples: sales and distribution methods,
consumer profiles, advertising strategies, lists of
suppliers and clients, manufacturing processes.
• No formal procedure for protection of trade secrets.
EXAMPLES OF BRANDS WITH
TRADE SECRETS
GEOGRAPHICAL
INDICATION
• Geographical indications (GI) are signs used on goods
that have a specific geographical origin and possess
qualities, a reputation or characteristics that are
essentially attributable to that place of origin.
• In order to function as a GI, a sign must identify a
product as originating in a given place.
• In addition, the qualities, characteristics or reputation
of the product should be essentially due to the place of
origin. Since the qualities depend on the geographical
place of production, there is a clear link between the
product and its original place of production.
What can be protected
• Geographical indications are typically used for agricultural products,
foodstuffs, wine and spirit drinks, handicrafts, and industrial
products.
Roquefort cheese
•
Scotch Whiskey of Scotland
• There are three main ways to protect a
geographical indication:
• sui generis systems (i.e. special regimes of
protection);
• collective or certification marks (A certification
mark is a specific type of trade mark. They
provide a guarantee that the goods or services
bearing the mark meet a certain defined
standard or possess a particular characteristic. A
collective mark is a specific type of trade mark
which indicates that the goods or services
bearing the mark originate from members of a
trade association, rather than just one trader);
• methods focusing on business practices,
including administrative product approval
schemes.
Rights conferred by
Geographical Indications
• A geographical indication enables the owner to prevent its use by a
third party whose product does not conform to the applicable
standards.
For example, in the jurisdictions in which the Darjeeling geographical
indication is protected, producers of Darjeeling tea can exclude use
of the term “Darjeeling” for tea not grown in their tea gardens or not
produced according to the standards set out in the code of practice
for the geographical indication.
• Note that, a protected geographical indication does not enable the
holder to prevent someone from making a product using the same
techniques as those set out in the standards for that indication.
Protection for a geographical indication is usually obtained by
acquiring a right over the sign that constitutes the indication
Applicable laws in
Nigeria
•
•
•
•
•
•
The Nigerian Trade marks Act 1965 and Regulation of 1967
The Patents and Designs Act
The Nigerian Copyright Act
Nigerian Internet Registration Association (NIRA) Regulations
The Merchandize Marks Act
Trade Malpractices (Miscellaneous Offences) Act
 Some of these Laws criminalize the following acts:
 Forgery of trade marks;
 False trade description;
 Manufacture, sale or possession of machineries used in forging trade marks
 Deceptive application and use of trade marks
 Piracy ( Unlawful production of works for economic benefits)
 Importation of infringing works
 Distribution for the purposes of trade any infringing copy of a work
Protection under common law
•
•
•
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Passing Off
Product liability
Contract
Trade secret
TREATIES
•
•
•
•
Paris convention Treaty
Berne Convention
TRIPS
PCT (Patent Cooperation Treaty
Why is IP important?
• Economic Benefits
• Many products or services embody different types of
intellectual property
• Intellectual capital, which translates to intellectual
property assets, makes up approximately 80% of the
worth of the Fortune 500 Companies
• IP Assets are vital to all businesses and are indeed
a source of securing the competitive advantage in
the market place
• The driving force of successful businesses in the
21st Century is use of innovation and creativity
DANGER IN IGNORING IPRs
TIPS ON IPR PROTECTION
• Registration,
Maintenance
and
Exploitation of Intellectual Property Rights
(IPRs)
• IP Audit – What do you have? What is it’s
value . From this you can develop a
strategy through which you may exploit
your IP
• Be Vigilant
WHAT NEXT?
• Identify your IPRs, Protect your IPRs,
Respect other people’s IPRs, and …
Exploit your IPRs
EXCERCISE
TYPES OF IP – ALL IN ONE
BOTTLE CAP
Could be protected
by a patent, a utility
model or by design
rights.
FORMULATION
Protected by both
patent and knowhow.
GAVISCON
ADVANCE, THE
LOGO AND THE
COLOURS
are all registered
trade marks.
Trademark
LABEL DESIGN
AND
INSTRUCTIONS
Protected by
copyright.
BOTTLE
Protected by
registered design.
QUESTIONS??