Kenya: Is ACA recordal an absolute requirement?

Intro
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.

Customs recordal
For a number of years we have known that Kenya will have 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), it seems likely that trade marks will be most affected. Failure to register 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.

The latest development
In a recent 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 will take effect on 1 July 2022.
  • As of that date it will be an offence to import goods bearing IP that has not been recorded – such goods will be seized and importers prosecuted.

What exactly does this mean?
It is certainly not as clear as one would like. One Kenyan commentator has interpreted these developments as follows:

  • It is mandatory for IP owners to record the IP rights that relate to goods that are imported into Kenya.
  • Any other person importing goods should notify the ACA of the particulars of the goods.
  • On approval of an application the ACA will issue a certification mark in the form of an anti-counterfeit security device.
  • The ACA can destroy any goods that do not bear the device.
  • Recordal lasts 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.
  • No recordal is necessary for raw materials/unfinished goods.
  • No recordal is required for service marks.

Comments
The notification of 26 April 2022 is clearly very significant. IP owners who sell goods in Kenya will now need to register their rights with the ACA on an annual basis. We are in a position to assist our clients with the registration of their rights with the ACA.

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 entering the country. Yet there is nothing in the notification that makes this clear.

Our advice to IP owners is simple – register your rights with the ACA. Please get in touch with your usual Spoor & Fisher contact.

*Public Notice No. 1/2022 Anti-Counterfeit Authority.

Contact us for further information.