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mARCH 2012 78 Legal Focus
IP issues with M&A Nigeria
As part of Lawyer Monthly’s Legal Focus on IP issues that arise within M&A transactions, we speak to Uwa Ohiku, a Partner at Nigerian law firm, Jackson, Etti & Edu and Head of the firm’s Intellectual Property Law practice.
Jackson Etti & Edu is one of Nigeria’s most prestigious law firms. A full service law firm offering Corporate Commercial, Litigation/Dispute Resolution and Intellectual Property services, the firm is the undisputed leader in the field of Intellectual Property law. For the last 13 years or so, the firm has been voted, consecutively, as a Tier 1 Law firm for intellectual Property Law by MIP- Managing Intellectual Property, a Euromoney publication. Last year, we were shortlisted for the prestigious IP Law Firm of the year in an Emerging Market award, and at the award ceremony in London in November, Jackson, Etti & Edu was highly commended for its work in this practice area despite challenging circumstances.
Q Q
what are the most common IP-related challenges to arise within mergers and acquisitions in your experience?
• Tangible vs. Intangible Assets - More attention is still being given to
Can you introduce yourself and the firm
tangible assets, to the detriment of intangible assets. A total and complete paradigm shift is required in this respect, to enable IP assets to be adequately assessed during the M&A process.
• Identification of IP Assets – This flows from the preceding paragraph. What exactly are the IP assets of the company/nies? How are they identified? What expertise is available for this? Sometimes, IP practitioners are not brought in at the initial stage of the M & A processes.
• Time constraints: M&As often require intensive investigations and due diligence of the parties involved within set time limits, which may be inconsistent with a thorough enquiry into the myriad of IP issues that can come up. These are: identifying the IPRs, sorting out their recordation status; deciding which ones are valuable and which to be dropped; ensuring they are updated, etc. When the timelines is unrealistic, the IP expert has to ensure that representations, warranties, share adjustment and indemnities of the parties are watertight such that parties may adequately rely on the same.
• Synchronizing the IP Assets of the parties- This may pose some measure of difficulty particularly if a company has to relinquish some or its entire IP assets. Compatibility check of the IP assets for both parties is often necessary.
• Valuation of IP assets- There is a dearth of qualified experts that can value IP assets in the country thus there is difficulty in determining the value of IP assets, as the techniques for valuing tangible assets are grossly inadequate and/or inappropriate, for valuing intangible assets.
• Multiplicity of Legal systems - Trademarks being territorial in nature, registrations obtained in other jurisdictions are not automatically protected in Nigeria and formal steps must be taken to obtain protection for them locally. In cross-border M&As therefore, the differences in the local laws of the parties must therefore be borne in mind, especially where Nigeria is not a signatory to the relevant Conventions which the other party is, such as Madrid Protocol.
• Recordation/Updating Proprietorship Changes (licenses, assignments etc) -