West African Cotton Company Limited v Hozelock Exel: How may a petitioner establish lack of novelty of a registered design in Nigeria?

In a decision issued pre-Covid19 lockdown in Lagos, Nigeria, the Federal High Court of Nigeria held that the two registered designs belonging to the respondent, Hozelock Exel, were not new as the products made from the designs were similar to the products described in various shipping documents tendered in evidence by the petitioner, West African Cotton Company Limited. The registered designs were nullified as a result. [Readers may request a copy of the decision from Nnenna]

Compare designs side by side

Background
With a petition filed before the Federal High Court (FHC) in December 2015, the Petitioner – West African Cotton Company Limited (WACCL) – sought the nullification of Registered Designs Nos. RPD/D/F/RD/2010/96 RPD/D/F/RD/2010/97 (the “2010 designs”) belonging to Hozelock Exel (Hozelock) relating to diaphragm knapsack pump sprayers.

Nullification was sought on grounds that the designs are not new, having been, contrary to section 13 of the Patents and Designs Act made public prior to their registration. To support its claim that the designs were made public prior to their registration, WACCL tendered a sample of its own diaphragm knapsack pump sprayers as well as shipping documents showing the importation of its sprayers prior to Hozelock’s application for registration of the 2010 designs. WACCOL’s argument was that there are significant similarities between its sprayers (which existed prior to the Hozelock’s application for registration) and the pump sprayers made from the 2010 designs. [By virtue of section 13(3) of the Act, “an industrial design is not new if, before the date of application for registration, it has been made available to the public anywhere and at any time by means of description, use or in any other way…”]

In response, Hozelock tendered its application/acknowledgment of application for registration of the 2010 designs, certificates of registration for the 2010 designs and a sample of its pump sprayers, which was manufactured using the 2010 designs. Hozelock submitted inter alia that WACCOL’s shipping documents do not contain or portray any designs that may be compared with the 2010 designs to establish similarities that may be construed as evidence of prior publication.

The key question before the court was whether – for the purposes of establishing absence of newness – WACCOL has discharged the burden on it in that regard.

The decision
In line with the principles set out by the Court of Appeal in Densy Industries (Nig) Ltd v Uzokwe (1999) 2 NWLR (Part 591) at 392, the Court held that the petitioner needed to produce evidence that any of the circumstances indicated in section 13(3), (4) and (5) of the Patents and Designs Act was applicable. Once any of those circumstances is found to exist, “a court of law is bound to hold that the design was not new at the time of the application…”. [Section 13(3) deals with prior publication, section 13(4) and (5) respectively deal with publication at an official exhibition and minor or inessential differences with an earlier design.]

Having established the circumstances that must be established to prove that a registered design was not new, the Court moved on to consider how the said circumstances may be established. In this regard, the court noted that such situation would require a comparison between the registered design(s) and the designs alleged to be the subject of prior publication (or existing prior to the application for the registered design). The court compared the date on which Hozelock made its application to register the 2010 designs with the dates on the shipping documents tendered by WACCOL. The court also compared Hozelock’s pump sprayers and WACCOL’s pump sprayers. The court found that WACCOL’s shipping documents predates Hozelock’s application for registration. The court also found that the pump sprayers were similar, that any differences were minor or non-essential and that the two pump sprayers were made from the same design. For these reasons, the court held that the 2010 designs were not new.

Comment
This case continues Nigeria’s “tradition” of having judges act as “ex post examiners”. Under section 13(2) of the Patents and Designs Act, designs are presumed to be new at the time of application for registration. This presumption of newness is rebuttable as indicated above in terms of section 13(3), (4) and (5). Significantly, it is only the court that is empowered under the Act to examine designs side by side to determine if an allegedly new design is actually a repetition of an existing design. The question is whether a non-specialist court has the requisite expertise to make such comparisons. Following from this is the question of whether it is helpful in a 21st century IP system to make comparisons piecemeal (i.e. per individual court applications).

That said, one is mindful of the fact that as noted by South Africa’s constitutional court in relation to patent validity challenges in Ascendis Animal Health (Pty) Limited v Merck Sharp Dohme Corporation and 2 Other [2019] ZACC 41 (paragraph 100), in the absence of substantive IP examination systems to balance the monopoly conferred by IPRs, validity challenges should be encouraged as they offer an avenue for IPRs to be tested.