Today, many creatives and innovators painstakingly churn out designs without taking an extra step to register them. While, the fear and resultant effect of intellectual property theft still looms in the corridors of the creatives space, it does not exterminate the need to secure the design rights of creatives to guarantee exclusive right of use over designs as well as the exclusive right to enjoy the financial benefits that comes with such protection which solution lies solely in having the design registered. In this article, we will walk you through how to register a design in Nigeria. First, let us explore the basis of a registrable design and why it matters.
What is a design?
In Nigeria, a design is known as ‘Industrial Design’ and according to Section 12 of the Patent and Design Act[1], which Act provides for the registration, protection and enforcement of Industrial Design, a design is any combination of lines or colours or both, and any two or three-dimensional form, whether or not associated with colours if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process. A design enjoys legal protection when made for commercial and industrial purposes. Hence, a person infringes on the design right of another where the creator of such a design intends for it to be used for commercial and industrial purposes.
Additionally, if it is used for purely educational or scientific purposes, then an infringement would not occur. It is worth noting that a design is what informs the choices of consumers. It is the identity of the product or service of the creator. It is not the functionality of the design that is protected, but the design itself. For example, Louis Vuitton and Hermes may have the same product, which is luxury handbags, but the scope of design right protects the design itself. Hence, an infringement would occur where Louis Vuitton imitates the same design as Hermes.
What are the benefits of registering a design?
- Exclusive Right of Use: A registered design affords the creator the exclusive right to deal with the design to the exclusion of third parties. This right prevents unauthorized use of the design without the consent of the creator.
- Enhances the Marketing and Commercializing Goals of Enterprises: Design is a vital element of a company’s identity; hence, registering it can further guarantee the safety of the design and promote the market value of the enterprise.
- Boost Revenue: Having a registered design prevents third parties and competitors from cashing in on the products or services promoted by the company. Design rights can be licensed to another enterprise, which will then serve as a source of revenue to the rights owner.
What are the qualifications for registering a design in Nigeria?
Section 13 of the Patent and Designs Act, prescribes the elements of a registrable design which are as follows:
- Newness and Public Morality Test: For a design to qualify for registration it must be new or original and must not be contrary to public order of morality. The newness test simply demands that the design must be a product of an independent creation and not a copy or obvious imitation of an existing design. Furthermore, the design must not have been disclosed to the public anywhere or at any time by description.
- Minor Variation Test: A design will not qualify for registration where it only a minor variation of an existing design.
- Technical Function Test: The design will not be registered if it is solely identified by its utilitarian or technical function.
- Industrial Process Test: A design will qualify for registration when it is created to be a model or pattern to be multiplied by industrial process.[2]
What is the duration of a registered design in Nigeria?
Upon registration, a design right subsists for a period of 5 years, which can be renewed for two consecutive periods of five years each upon payment of the prescribed fee.[3]
Can multiple designs be registered using one application?
Before now, a single application can relate to a number of designs not exceeding fifty, where the products to which the designs relate are of the same kind[4]. However, the current position in practice is that multiple designs application is not permissible in Nigeria.
Can a design registered outside Nigeria claim foreign priority?
Yes, a design registered outside Nigeria can claim foreign priority by filing an application in the prescribed form, accompanied by a written declaration showing the date and number, country, and name of the applicant of the earlier application.[5]
How to register a design in Nigeria?
The Patents and Designs Act is the law that regulates the registration of designs in Nigeria. The law provides the procedure and requirements for registering a design in Nigeria as follows;
- An application in the prescribed form shall be submitted to the Registrar of Patents and Designs, Federal Ministry of Trade and Investment, under the commercial law department.
- The application shall contain the following:[6]
- A request for registration
- The name and address of the applicant
- A specimen or pictorial representation of the design
- An indication of the kind of product where classification has been described.
- The application shall be accompanied by payment of the prescribed fee, a declaration by the true creator, where the applicant is not the true creator, requesting to be named in the register, and a signed power of attorney, where the applicant is an agent.
- Upon submission, an examination of the application shall be carried out by the Registrar to confirm that the application, together with other documentation, has complied with the provisions of the law
- Where the Registrar is satisfied that the design conforms to the requirements of the law, the design shall be registered.
- A certificate of registration shall be issued to the applicant.
Conclusion
Registering a design in Nigeria is not just about securing your intellectual property; it is about protecting your creativity and innovation in a competitive market. With the right steps, from understanding what constitutes a design to navigating the registration process at the Nigerian Patents and Designs Registry, you can ensure that your unique creations are safeguarded from infringement. By following the outlined process and preparing the required documents carefully, you are well on your way to not only establishing your legal rights but also bolstering your position in the marketplace, making your designs more valuable and recognizable.
For assistance or enquiries on how to register a design in Nigeria, you may reach out to us through our Whatsapp platform on this page or HERE, and we’ll respond to you.
[1] Section 12
[2] Section 12 PDA
[3] Section 20 PDA
[4] 15 (2) PDA
[5] Section 15 (2) PDA
[6] Section 15 PDA
