Africa is awash with counterfeit goods. The product area that attracts the greatest attention and concern is pharmaceuticals – fake pharmaceuticals account for 30-60% of the African market, and it is estimated that some 100,000 people die in Africa annually because of counterfeit pharmaceuticals. Counterfeiting reduces tax revenue and it inhibits economic growth by deterring investors.

Differing approaches

Some African countries, such as Kenya and South Africa, have specific anti-counterfeiting laws. In South Africa, the Counterfeit Goods Act empowers ‘inspectors’ who include the police and customs officers to implement the Act. In Kenya, The Anti-Counterfeit Act established a specialised body, being the Anti-Counterfeit Authority with considerable powers to take action against counterfeits. In addition, inspectors, including the police and customs, have substantial ex officio powers to take action against counterfeits.

The Ugandan Anti-Counterfeiting Goods Bill

The problem of counterfeits is arguably less acute in Uganda than in other neighbouring countries, but it remains a critical issue. So much so that a local MP was granted leave by Parliament to introduce a private member’s Bill entitled “The Anti-Counterfeit Goods Bill (the Bill)”. The Bill has been published and is undergoing public consultation.

Existing remedies apply for now

Until the Bill becomes law, Uganda will be without specific anti-counterfeiting legislation. But it is worth remembering that effective actions (civil and/or criminal) against counterfeiters are already possible.

In particular, the Trademarks Act 2010 provides comprehensive measures relating to counterfeits. That Act makes counterfeiting and related activities a criminal offence and details several measures to take action against counterfeiters.

Effective action can also be taken in terms of the Standards Act, as counterfeit goods often do not meet industry standards. In addition, the National Drug Authority has substantial powers to, among other things, seize and detain fake drugs.

The Ugandan Customs Authorities have also created a practical process that involves seizing counterfeit goods; reporting to the brand owner; allowing the brand owner to determine if the goods are counterfeit, sign an affidavit and apply for a court order authorising the destruction of the goods.

Despite the current legislation in Uganda, it is generally accepted that it is insufficient to deal with the realities of counterfeits and counterfeiters. The current laws lack agility, are too cumbersome, and, consequently, are ineffective to a considerable degree.

Some detail about the new Bill

Uganda’s Bill covers various issues, such as:

Prohibitions

The Bill prohibits both ‘trade in counterfeit goods’ and ‘the release of counterfeit goods into channels of commerce’.

Offences and seizures

The Bill sets out to ‘create offences relating to trade in counterfeit goods’ and ‘empower the implementing body and authorized officers to seize and detain suspected counterfeit goods’.

The implementing body

The Bill speaks of an ‘implementing body’, which will include the Registrar of Copyright and the Registrar of Trademarks. The implementing body will have considerable powers, which include entering premises where counterfeit goods may be held, and seizing and removing counterfeit goods as well as tools made for manufacturing such goods.

The Bill states that the implementing body shall, in carrying out its functions, cooperate with other enforcement officials but particularly the police and customs.

Practicalities

The Bill deals with practical issues, such as: evidence and presumptions; the storage of, and access to, seized goods; the release of seized goods; forfeiture of seized goods; and penalties for dealing in counterfeit goods.

Deadlines and timeframes

Unlike the anti-counterfeiting laws in Kenya and South Africa, the Ugandan Bill makes no provision for deadlines or timeframes within which seized goods must be released. The Bill also fails to deal with instances where the offender absconds or fails to appear in court, or set out what would happen to the seized goods in that event.

Some observations about the Bill

Here are a few:

  1. There is no definition of ‘implementing body’ although it is made up of various Registrars (dealing with intellectual property), as well as the National Drug Authority. Other than the latter body, the others do not have significant enforcement capabilities.
  2. Whilst the Bill makes it mandatory for the implementing body to cooperate with police and customs, those two organisations have no ex officio powers to act independently. They can only act with the authority of the implementing body.
  3. The wording relating to the storage of any seized goods is vague. It does not provide for goods to be stored in any counterfeit goods depot or facilities.
  4. Complaints must be lodged with the implementing body, but it is not clear if this body even exists.
  5. There is a provision for a complaint to be filed where the import of suspected counterfeits is anticipated, but the complaint is seemingly first filed with the implementing body, which must then instruct the Uganda Revenue Authority to seize the goods.
  6. The fines imposed are shared 50/50 between the owner/licensee and what is described as the ‘consolidated fund’, but there is no detail about this fund.
  7. There is no provision for the recordal of customs watches, and the customs authorities appear to have limited independent seizure power.

Final words

There are shortcomings in the Bill, particularly around the lack of independent powers vested in the police, customs and other enforcement officials. It is, however, heartening that Uganda does seem determined to tackle counterfeiting vigorously.

 

This article was first published in WTR Daily.