All NewsFeatures

Intellectual property considerations for start-ups

By Omoruyi Edoigiawerie, Esq                                        

The world is evolving and an integral aspect of this inevitable evolution is innovation. Many start-ups are building innovative products and services. However, just as with any business, the early stage of every start-up is very demanding and comes with a lot of challenges.

Founders compete with several issues from building their team, structuring the company, attracting investments to developing the product/service to suit customer expectations and demands. These initial issues consume time and take a toll on both their financial and human capital resources.

During the formative years, it is often a challenge to simultaneously focus on intellectual property issues, however, the early stage is also a very critical time for ensuring that a business takes steps to protect its core intellectual property portfolio and avoid the risk of intellectual property theft or violation from third parties.

Today, more than ever, having a solid understanding of Intellectual Property and developing an intellectual property strategy that aligns with your business is a crucial element of building a start-up anywhere in the world.

This article, therefore, focuses on providing an insight into the different types of intellectual property and serving as a guide for start-ups to understand how to secure their intellectual property and protect them from theft and infringement.

According to the World Intellectual Property Organization (WIPO), “Intellectual property refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce”

The principal types of Intellectual Property rights under the Nigeria Legal System are copyright, patents, trademarks, and industrial designs and these rights are preserved under different regulatory frameworks which include the Copyright Act, the Trademarks Act, Patent & Design Act, and the Merchandise Marks Act.

The provisions of these laws are enforced by the Nigerian Copyright Commission (“NCC”), Trademark, Design and Patents Registry a Department of the Federal Ministry of Industry, Trade & Investment, The National Agency for Food and Drug Administration Control (“NAFDAC”), The Nigerian Police (“NPF”) and The Nigeria Customs Service (“NCS”).

It is important to note that Nigeria is also a signatory to the World Intellectual Property Convention (“WIPO”) of 1970, Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), Berne Convention, and Rome Convention for the Protection of Performers, Producers of Phonograms &Broadcasting Organisation.

This means that intellectual property rights are taken very seriously and have far-reaching implications for start-ups especially those whose businesses cut across different geographical locations and jurisdictions.

As pointed out earlier, there are four types of intellectual property that start-ups should consider. They will now be discussed in detail below:

 *Patents

A patent is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how – or whether – the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.

Patents are important for two reasons:

1)           To protect your own business and inventions from your competitors

2)           To avoid the risk of being exposed to assertions of patent infringement by competitors and other third parties

For an invention to be patentable in Nigeria, such invention must meet three requirements:

a)           Be new;

b)           Result from inventive activity; and

c)           Be capable of industrial application.

The right to the registration of a patent is vested in the statutory inventor, simply put, the person who, whether or not he is the true inventor, is the first to apply for the grant of the patent or design. This is why start-ups cannot afford to ignore intellectual property protection.

However, where the essential elements of an application for registration and the filing of the application had been obtained without the consent of the true inventor or creator, all rights in the application and any consequent registration shall be deemed transferred to the true creator.

Also, where the statutory inventor/creator files for registration, then the true inventor/creator is entitled to be named as such in the register.

*Why are patents important?

Although patents are the most expensive and time-consuming type of intellectual property to obtain, they also provide the best scope of protection. A patent provides its holder with the exclusive right to make, use or sell an invention.

This means that it can exclude a competitor from making or selling the patented invention, irrespective of whether or not the competitor copied the invention or even previously knew of the patent.  For this reason, a patent that covers an important feature that drives consumer demand and distinguishes one’s product or service from that of competitors can be very valuable.

*Copyright

Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and technical drawings

This is one of the simplest forms of Intellectual Property protection which bestows upon the owner of a work many rights and legal benefits which can prevent the unauthorised usage or exploitation of their works.  It is important to point out that the legal owner of the work is not always its creator; such as in cases where the copyright has been sold or assigned to another party.

Copyright is automatically applied to a wide range of original works and creations, and is most usually associated with artistic creations such as literary works, drawings, logos, photographs, computer programs, sculptures, recorded music, recorded video, and so forth.  A person’s copyright becomes valid from the moment that a work that falls into a relevant category is created, without the need for registration or another legal process. However, it is advisable to register the copyright as it serves as a good proof of ownership and makes it easier to seek legal redress where an infringement occurs.

Also when referencing published works, the owners should include the “©” symbol or the word “Copyright” on all distributed materials. They should also include the year of first publication, the name of the owner, and the language “All rights reserved.”

It is also important that start-ups when designing their brand items, website, and promotional materials, avoid using third-party photos, music, materials, or products. Such use could lead to a potentially costly infringement dispute with the copyright holder and hamper their growth and development.

*Trademarks

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks take us into the world of branding and they serve to build brand awareness and business goodwill. They can impart consumer confidence in a product by its association with a brand the consumer recognizes and trusts. A trademark can be words, symbols, logos, slogans, or product packaging and design that identify the source of goods or services.

Unlike patents, trademark rights are only acquired through use. Even without registration, the symbol “TM” may be used to accompany trademarks or service marks to designate products or services. However, only registered marks may be accompanied by the “®” symbol.

Start-ups should look to protect their brand early by registering their trademarks. Registration is relatively quick and inexpensive especially compared to the cost of seeking legal redress for trademark infringement. A trademark application must specify the type of mark; whether the mark consists of just words or includes a design or an identifying color. The application must also specify the particular goods or services to which the mark will apply. In Nigeria, trademarks are grouped into 45 classes and you are only protected in the class where you register.

*What legal rights flow from a registered trademark?

Trademark rights are private rights specific to the legal owners who have taken legal steps to register their ownership. Registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the legal ownership of the right holder.

As the start-up grows, it will become increasingly important to monitor and ensure that its registered trademarks are not infringed upon. This will ensure that the business does not lose customers due to confusion with knock-offs from other competing businesses.

*Industrial designs

Industrial designs refer to compositions of colours or lines which give a three-dimensional look to handicraft or product. They are elements that are added to a mass-produced item that enhances its distinctiveness or attractiveness.

Industrial design protection covers a colour, shape, surface pattern, line, or configuration of an article that increases or produces aesthetics and improves the appearance of a design, whether it’s two-dimensional or three-dimensional.

Industrial designs that are independently created must be novel or original and it is usually considered to be novel or original if it has not been publicly disclosed. Typically, industrial designs are created to enhance the functional feature of a product without which the product would be incomplete.

To be registrable, an industrial design must;

a)           Be New and

b)           Must not be contrary to public order or morality

It is important to note that registration rights are conferred on a scale of priority. The first person to file and register the design becomes the statutory holder and receives priority of rights and ownership. This will prevent any other attempt at reproducing the same design by third parties.

NDLEA arrests 611 drug traffickers in Kaduna


Omoruyi Edoigiawerie is the Founder and Lead Partner at Edoigiawerie & Company LP, a full-service law firm offering bespoke legal services with a focus on start-ups, established businesses, and upscale private clients in Nigeria.  The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. His firm can be reached by email at [email protected]

Show More

Related Articles

Leave a Reply

Back to top button
Close

Adblock Detected

Please turn off Adblocker or whitelist this website in your Adblocker to enable us display ads