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Amendments to the Anti-Counterfeit Act come into force

21 February 2019
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Kenya has stepped up the battle against counterfeit goods by granting additional powers to the Anti-Counterfeit Authority and expanding the meaning and scope of counterfeit enforcement. This is the intended effect of several amendments to the Anti-Counterfeit Act (13/2008), made through the Statute Law (Miscellaneous Amendment) Act of 2018. Here are some of the more noteworthy amendments.

  1. The Anti-Counterfeit Agency is now known as the Anti-Counterfeit Authority (the Authority or ACA) and will advise the government on the protection of intellectual property rights (IPRs), as well as counterfeiting;
  2. The definition of counterfeiting has expanded the meaning of counterfeit enforcement, which will now include IPR existing outside Kenya. Previously, the Authority could only enforce an IP owner’s rights if they had registered their IPRs in Kenya. This provides comfort to brand owners who wish to enter the Kenyan market but have not registered their IPRs in the country.
  3. The law now recognises counterfeit marks. These are spurious marks used in connection with any goods, label, emblem, packaging, etc. of any nature, which are identical to and used for the same purpose as a registered mark and which are likely to cause confusion or mistaken perceptions or are deliberately meant to deceive consumers.
  4. Claims against the ACA can now only be instituted within a period of 12 months from the date of the seizure, removal or detention of goods. This is a move away from the previous position whereby a claim could be initiated against the ACA at any time (subject to the limitations of other relevant legislation).
  5. The Authority’s inspectors have been granted additional powers and can now do the following:
    1. investigate any offence related to counterfeiting even though the offence is not defined under the Anti-Counterfeit Act;
    2. exercise similar powers as customs officers in relation to the importation of counterfeit goods under the East African Community Customs Management Act;
    3. with the appropriate warrant, enter any premises where it is suspected that an offence under the Anti-Counterfeit Act is being or is about to be committed (the owner of the premises does not have to be present but the inspectors must leave the premises as secure as they found them); and
    4. receive and act on consumer complaints as consumers are now allowed to lodge complaints.
  6. The amendments specify the following additional offences:
    1. being in possession or control in the course of trade of any labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hand tags, documentation or packaging of any type or nature, with a counterfeit mark applied thereto, the use of which is likely to cause mistaken perceptions or is purposefully meant to deceive consumers;
    2. aiding, abetting or conspiring in the commission of any offence under the Anti-Counterfeit Act;
    3. importing any goods or items bearing a trade mark, trade name or copyright that has not been recorded with the ACA;
    4. importing, in the course of trade, any goods or items except raw, unbranded materials;
    5. failing to declare the quantity of or the IPRs subsisting in any goods being imported into Kenya;
    6. falsely declaring the quantity or the IPRs subsisting in any goods being imported into Kenya; or
    7. importing or transiting (through Kenya) any labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hand tags, documentation or packaging of any type or nature, with a counterfeit mark applied thereto, the use of which is likely to cause confusion or mistaken perceptions or is purposefully meant to deceive consumers.
  7. In the event that a court of law finds that a suspect has obtained a monetary benefit from dealing in counterfeit goods, the Authority can now redirect the monetary benefit in question towards the funds of the Authority itself. This is an important addition to the Act as it ensures that those who commit counterfeiting offences do not benefit from their crimes; instead, the Authority can use the funds to combat counterfeit issues and offences.
  8. The addition of section 34B to the Anti-Counterfeit Act is arguably the most significant amendment as it introduces a recordal system for IPRs. The ACA must now record IPRs that relate to goods being imported into Kenya, whether an IPR is registered in or outside Kenya. A successful recordal will result in an IPR owner being issued with a certification mark in the form of an anti-counterfeit device.

The ACA anticipates that the recordal system will be implemented during July 2019. There are currently ongoing discussions on the recordal system, as well as decisions to be made on prescribed fees and other matters related to the system. Upon the conclusion of the ongoing discussions, the ACA will commence a sensitisation process to create awareness to IPR owners and the public at large on the recordal system.

The advent of this recordal system is welcome as it will strengthen and improve the enforcement of the Anti-Counterfeit Act in Kenya. It could also result in IPR owners spending less on battling counterfeit goods. As soon as this recordal system is implemented, IPR owners must ensure that they are fully compliant with the requirements for the importation of goods into Kenya.

In other news, the Bowmans Anti-Counterfeits team has been invited by the ACA to train their new team of inspectors on conducting effective raids on 6 March 2019 which will take place at the Kenya School of Law.

Chambers and Partners 2019 ranked Bowmans Band 1 in Intellectual Property in Kenya.