Trademarks Registrar is entitled to require accreditation of practitioners

Registered trustees of intellectual property lawyers association nigeria v. The registrar, trademarks, patents and designs; the honourable minister for trade and investment

FEDERAL HIGH COURT (ABUJA DIVISION) (ADEMOLA, J.)

The Defendants issued a directive requiring legal practitioners and agents desirous of register intellectual property rights to first obtain accreditation from the 1st Defendant. The Defendants also increased application fees in respect of trademarks, patents and designs.

The Plaintiff challenged these directives by filing an originating summons at the Federal High Court, Abuja. It sought several declarative reliefs including one that the mandatory accreditation imposed by the 1st Defendant is in violation of the Trademarks Act and the Legal Practitioners Act and therefore ultra vires, void and of no effect whatsoever. The Plaintiff also prayed for a consequential order setting aside the directive mandating the accreditation.

One of the questions put forward by the Plaintiff for determination by the court was:

“Whether the mandatory accreditation of Agents and Legal Practitioners by the 1st defendant commencing on the 16th of July 2012 at the Trademarks, Patents and Designs Registry is ultra vires, null and void?”

The Plaintiff’s counsel submitted that neither of the Defendants can validly compel or mandate the accreditation of agents and legal practitioners as this power is not expressly or impliedly provided for under the provisions of the Trademarks Act and the Patents and Designs Act.

In response, counsel to 1st Defendant submitted that the 2nd Defendant acted in accordance with its powers to make regulations under section 45 of Trademarks Act and section 30(1) of Patent and Designs Act.

Section 45 of the Trademarks Act provides as follows:

“ Power to make regulations

(1) The Minister may make regulations

(a) for regulating the practice under this Act, including the service of documents;

(b) for classifying goods for the purposes of registration of trademarks;

(d) for securing and regulating the publishing and selling or distributing, in such manner as the minister thinks fit, of copies of trade marks and other documents;

(e) for prescribing the fees to be paid in respect of applications, registrations and other matters under this Act;

(f) for prescribing anything required or authorized by this Act to be prescribed by regulations;

(g) for extending the time limited by this Act for the performance of any act, whether generally or in particular cases and whether at the discretion of the Registrar or otherwise;

(h) for imposing restrictions as regards the registration under this Act of the arms, flags, emblems, titles or other distinctive marks of any country or international organization;

(i) generally, for regulating the business of the office of the Registrar and all things by this Act placed under the direction or control of the Registrar or the Minister.

(2) Regulations under this section shall not have effect until published in the Federal Gazette.”

Section 30 (1) of the Patents and Designs Act provides that:

“(1) The Minister may make rules-

(a) prescribing anything requiring to be prescribed for the purposes of this Act, (including summary forms of notification of the grant of a patent and the registration of a design, and classifications of products to which designs relate);

(b) regulating the manner in which the Registrar shall maintain and make entries in the Register; and

(c) containing such administrative or procedural provisions as appear to him to be necessary or expedient in order to facilitate the operation of this Act.”

The court considered the above statutory provisions and answered the question asked by the Plaintiff in the negative.

Resolving the issue against the Plaintiff, the court held as follows:

“A careful perusal of the provisions of the said Laws hereinbefore reproduced give the 2nd defendant the discretionary powers to make regulations governing the practice of Trademarks as well as Patents and Designs. (Underlinings mine). The wordings, are clear and unambiguous to be construed giving them their ordinary meaning.

…This court agrees with the submissions of 1st defendant’s counsel the 2nd defendant has the powers to regulate the practice of Trademarks by virtue of section 45 of the Trade Mark Act.

This court has also examined EXHIBITS 1P2-1P2A-B and EXHIBIT TM1 (Federal Republic of Nigeria Official Gazette) emanating from 2nd defendant and agrees with submissions of 1st defendant’s counsel that the 1st & 2 defendants are not preventing any person, agent or legal practitioner from manual or regular filing of applications under the Act.

Neither is the 1st or 2nd defendant compelling the mandatory accreditation of agents and Legal Practitioners under the provisions of the Trade Marks Act and the Patents and Designs Act but their practice. (Underlining mine)

In conclusion, Questions 1 & 2 are resolved against the plaintiff in favour of the 1st and 2nd defendants.

The 2nd defendant, through the 1st defendant, acted intra vires the provisions of Sections 45 & 30 of the Trademarks and Patent Designs Acts respectively.”

Counsel:

G. Edem with F. Aluko, J. Chizea and O. Adisa for the Plaintiff.

C. C. Okeke and E. Otu for the 1st Defendant.

This summary is fully reported at (2013) 11 CLRN

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