Please refer to our updated article.
Anti-Counterfeiting Act No. 13 of 2008
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.
Kenya’s dual registration system
Kenya has 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 is now here. And it is quite onerous – considerable detail is required regarding the rights owner, the country where the goods are manufactured, and the identities of foreign users and distributors. Samples or digital photos of goods will be required, as well as a certified copy of a Kenyan IP registration certificate.
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.
A recent development
In a notification headed Commencement of Recordation of Intellectual Property Rights, 26 April 2022*, the ACA announced that:
- The commencement of the implementation of recordation of IP rights would take effect on 1 July 2022.
- 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.
Discussions with the Anti-Counterfeiting Authority
We initiated these discussions because we felt that there were many uncertainties. We have now been told the following by the ACA:
- The commencement date, 1 July 2022, has been extended to 1 January 2023**. This will be a major relief to IP owners, as it will give them some time to do what needs to be done. 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 it 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.
- Perhaps most noteworthy is the comment that the authorities are unlikely to seize any goods on the basis that there has been no ACA recordal – they say that at the early stages their main goal is simply to compile statistics and data and encourage brand owners to have a registration on file in preparation for the next phase of the system. This certainly seems at odds with the notion that ACA recordal is mandatory.
The ACA recordal process
It is s certainly not as clear as one would like. But the process as we understand 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.
- 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
The notification of 26 April 2022, as read with the clarifications set out above, is clearly very significant. 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.
If you need any further information please feel free to contact your usual Spoor & Fisher contact.
*Public Notice No. 1/2022 Anti-Counterfeit Authority.
**Public Notice No. 2/2022 Anti-Counterfeit Authority
Protecting, managing and enforcing IP in Africa.
Contact us for further information.