Background

We have on a number of occasions drawn IP owners’ attention to the fact that if they do business in Kenya they are required to record their IP rights (IPRs) separately with the Kenyan Anti-Counterfeit Authority (ACA) – to be clear, this recordal of IPRs with the ACA is additional to the Kenyan IP registration.

The following points are worth highlighting:

  • The deadline for recordal is 1 January 2023, and this date is fast approaching.
  • The ACA emphasises that exporting goods to Kenya without first recording the IPR is a criminal offence.
  • Considerable detail is required on recordal, such as the country of manufacture, evidence of IPRs, and digital photos of goods.
  • Although the legislation refers to IPRs, the general consensus seems to be that the requirement is limited to trade mark rights.

The justification given for the dual recordal requirement is this – the ACA is adamant that the secondary recordal of IPRs will prove pivotal in the fight against counterfeiting.

The latest notice

The ACA has recently published a further notice* This notice states that ‘ACA will commence the Recordation of IP rights for imports on 1 January 2023’. It goes on to say that this is in accordance with Section 34B of the Anti-Counterfeit Act, as read with Legal Notices 117 and 118 of 2021.

The notice tells us a number of things:

The rationale for recordation:
Recordation is described as a ‘ trade facilitation measure aimed at promoting legitimate trade and proactively protecting intellectual property rights by ACA and other government agencies through verification of imports.’

The notice goes on to say that ‘importers will benefit from reduced clearance time and losses arising from enforcement intervention at the point of entry.’

As for the ACA, we understand that it has a ‘commitment to innovative steps in the fight against counterfeit trade’ in Kenya.

Benefit:
The notice says that all recorded IPRs will be accorded proactive protection against counterfeit imports under the provisions of the Anti-Counterfeit Act.

A priority system:
The ACA will prioritise the enforcement of the following product categories – alcoholic beverages, pharmaceuticals, electricals and electronics, clothing, footwear and cosmetics.

The technology:
The ACA will be using Kentrade’s Single Window System, see tfp.kenyatradenet.go.ke for processing IPR declarations for imported goods, and with Kenya Bureau of Standards (KEBS) for pre-import inspection of goods.

The recordal process:
IPR owners will apply directly or through ‘preferred IPR agents’. IPR agents and importers are notified to register with the ACA through the ACA public portal.

We appreciate that there is some confusion and concern about the IPR requirement. Please contact your usual Spoor & Fisher contact for further information.

*Public Notice No.3/2022 – Implementation of Recordation of Intellectual Property Rights for Imports