Kenya has specific anti-counterfeiting legislation, the Anti-Counterfeiting Act No. 13 of 2008, as well as a dedicated anti-counterfeiting body, the Anti-Counterfeiting Authority (ACA). There has for some time been confusion as to whether IP owners who sell goods in Kenya are required to register their trade marks separately with the ACA.
Some background – dual registration
Earlier this year, Kenya introduced what has been dubbed a ‘dual registration’ system. What this means is that an IP owner who imports goods into Kenya will be required to register its IP rights separately with the ACA – it is worth noting that, although the Kenyan authorities use the term intellectual property rights (IPRs), the assumption has been that this was primarily about trade marks.
Failure to register with the ACA will be an offence.
The ACA Recordal registration process has been in place for a few months. And it is quite onerous – considerable detail is required regarding the rights owner, the country where the goods are manufactured (this is mandatory), and the identities of foreign users and distributors.
Samples or digital photos of goods are required, as well as evidence of trade mark registration and renewal certificates.
When everything is up and running ACA inspectors will have the same powers as customs officers in respect of imported counterfeit goods. The thinking seemingly is that the ACA recordal process will result in more counterfeit goods being seized at ports of entry.
Recordal deadline is approaching
The commencement of the implementation of recordation of IP rights takes effect on 1 January 2023. As of that date it would be an offence to import goods bearing IP that has not been recorded – such goods will be seized and importers prosecuted.
Our most recent discussions with the ACA
We initiated these discussions because we felt that there were many uncertainties. It should be noted that there are discrepancies between what is stated in the law, and what is acceptable in practice.
We have been told the following by the ACA:
- Registrations obtained before January 2023 will in fact only run from January 2023.
- As far as the ACA is concerned, the ACA recordal is basically all about trade marks, not other IP rights – the ACA is quite clear about the fact that it would be unable to deal with patent recordals. Confusingly, the ACA does go on to say that other IP rights can be included (registered designs would seem the most likely).
- Recordal should be limited to the company’s most important trade marks. The ACA says that it would be unable to cope with recordal of a major company’s full portfolio of trade mark registrations. If a company has a number of registrations the ACA’s suggestion is that it should choose the one that is most apt. We would imagine that this might often be the ‘house mark’.
- Recordal will not be limited to Kenyan IP rights, trade marks registrations in other countries can form the basis of an ACA recordal. Our recommendation is that Kenyan registrations be obtained, particularly if the trade marks are being used on goods imported into the country.
What exactly does this mean?
It is certainly not as clear as one would like. But the process as we understand it is as follows:
- Trade mark owners who do business in Kenya should be recording their most important Kenyan (or indeed foreign) trade mark registrations with the ACA.
- On approval of an application the ACA will issue a certification mark in the form of an anti-counterfeit security device. This will be implemented later.
- The ACA can destroy any goods that do not bear the device.
- Recordals last for a period of one year from the date of approval of recordation or the remaining period of the IP registration, whichever is the shorter – a renewal application must be filed at least 30 days before expiry. The onus is on the brand owner to inform the ACA of a trade mark registration included in the recordal that has been renewed during the life of the ACA recordal. At this stage, the software does not allow for amendment of a recordal application and it appears that a fresh recordal with the ACA would be required.
- Where trade mark registrations are assigned or change ownership, the ACA must be informed of those changes.
- No recordal is necessary for raw materials/unfinished goods.
- No recordal is required for service marks.
Trade mark owners who sell goods in Kenya will in future be registering their rights with the ACA on an annual basis. We are in a position to assist our clients with the registration of these rights.
A question that does arise is whether the ACA will use this legislation to seize genuine goods entering Kenya.
Discussions that we have had with Kenyan officials suggest that this is not the case, and that the whole intention is to prevent counterfeit goods from entering the country.
Yet there is nothing in the notification that makes this clear.
We expect that the process will be fine-tuned over the coming years while the ACA come to grips with the system in practice, but for the time being, we recommend that brand owners apply to record their trade mark rights with the ACA to avoid complications on import into Kenya and to meet the immediate requirements being set by the ACA.
If you need any further information please feel free to contact your usual Spoor & Fisher contact.