Kenya: Important amendments to IP law proposed - Part 2

On 10 April 2018, the Kenyan authorities published proposed legislation, the Statute Law (Miscellaneous Amendments) Bill, 2018 (the Bill), which provides for amendments to several laws, including the Industrial Property Act 2001 and the Anti-Counterfeiting Act 2008. Below is a summary of the proposed changes to the Anti-Counterfeiting Act 2008. The proposed changes to the Industrial Property Act 2001 are discussed here

Amendments to the Anti-Counterfeit Act 2008

The Bill proposes significant changes to the Anti-Counterfeit Act 2008:

  • The Anti-Counterfeit Agency is referred to as the Anti-Counterfeit Authority. It is unclear at this stage whether this has any relevance or effect, but it is worth noting that in Kenya an Authority tends to be more powerful and prestigious than an Agency.

The most significant change is the creation of a dual trade mark registration system. This is a summary of the most important points: 

  • All trade marks relating to goods to be imported into Kenya will need to be recorded with the Anti-Counterfeit Authority. This is mandatory in the sense that it will be an offence for an importer of goods to import into Kenya any goods bearing a trade mark that has not been recorded with the Authority.
  • It appears that a trade mark registration (presumably Kenyan) will be a pre-requisite.
  • The recordal procedure will be as follows – the applicant will need to specify where the goods are manufactured, provide samples, disclose the identities of authorised foreign users, furnish a certificate of trade mark registration, and pay a fee (if the trade mark registration covers more than one class the Authority recordal fee will be per class). The recordal will last for one year, or for the remaining period of the trade mark registration, whichever is the shorter. Changes of ownership will need to be recorded, as will changes of name of the trade mark owner.
  • Bearing in mind that there is no copyright registration in Kenya, a really concerning issue is that these recordal provisions do not only apply to trade marks but also ‘copyrights, trade names or any other form of intellectual property rights.’
  • The Authority shall, after satisfying itself that imported goods have complied with the provisions of this section, issue to the importer a ‘certification mark’ in the form of an anti-counterfeit security device at a further fee. The Authority will have the power to seize and destroy any imported goods that do not bear the anti-counterfeit device. 
  • New offences are created. Some of these have little connection with intellectual property, others are hard to comprehend. It will be an offence to import into Kenya any unbranded goods except raw materials. It will be an offence to fail to declare ‘the quantity or the intellectual property right subsisting in any goods being imported into Kenya.’ It will be an offence to ‘falsely declare the quantity or the intellectual property right subsisting in any goods being imported into Kenya.’ 
  • There are some general changes, for example there is greater clarity on what constitutes a counterfeit mark, it becomes easier for the Authority to get a search warrant, and there is provision for counterfeiters to forfeit their profits to the Authority (rather than to the rights owner).

The proposed changes to the Anti-Counterfeit Act 2008 are significant and they will no doubt raise serious concerns. We hope that the Kenyan authorities will consider these concerns carefully.

Date published: 4 June 2018
Author: Spoor & Fisher Jersey

Tags: Kenya trade marks Anti-Counterfeit Act 2008