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KENYA: THE ANTI-COUNTERFEIT AUTHORITY’S COMPLIANCE REQUIREMENTS FOR INTELLECTUAL PROPERTY RIGHTS OWNERS

By John Syekei,David Opijah,Agnes Akal Tuesday, March 29, 2022
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The Anti-Counterfeit Authority (ACA) has commenced rolling out the intellectual property rights (IPR) recordation process. We discussed previous developments relating to the recordation process here and here.

Significance:

The significance of this new regulatory requirement is that the ACA have taken a pro-active approach in fighting counterfeits through the recordal of intellectual property rights. Prior to recordation of IPRs, brand owners bore the burden of monitoring goods sold in the Kenyan market and thereafter reporting any counterfeits to the ACA. The Recordation of IPRs will therefore significantly contribute to combating counterfeit trade moreso from the border entry points.

Once the ACA completes the recordation process, it will begin to enforce the penalty provisions of the Anti-Counterfeit Act, 2008 on persons who are not compliant. It is anticipated that the ACA will issue a notice on enforcement of the statutory provisions relating to recordal of IPRs in the next few days. This development is particularly important for foreign IPR owners who import their goods to Kenya.

A notable provision relating to the recordation process is that it is now illegal to import into Kenya goods bearing a trade mark, trade name or copyright, for commercial purposes unless the IPR is recorded. Further, not only are IPR owners required to record their IPRs importers they are also tasked with the responsibility of ensuring that IPRs relating to the goods imported are declared. Failure by importers to adhere to this requirement, will result in non-compliant importers being prosecuted as well as penalized.

The penalty for a first-time offender is three times the value of the prevailing retail price of the goods while a subsequent offender will be penalized five times the value of the prevailing price of the goods. A first-time offender is also liable to an imprisonment term not exceeding five years while a subsequent offender’s imprisonment term is a maximum of fifteen years. This penal consequence is in addition to the ACA seizing and forfeiting for destruction the non-compliant imported goods. Given the potential financial and criminal consequences, we strongly recommend importers ensure compliance.

Recordation Process

For purposes of conducting the recordal process, the ACA has developed a platform known as the Anti-Counterfeit Authority Integrated Management System (the Platform). With the aid of this Platform, the ACA will conduct the recordal process in three phases as expounded below.

Phase 1 – Applications

Currently the ACA is processing applications for recordal of trade marks and registration of agents appointed by an IPR Owner. Qualified agents include either members of any statutory professional body such as Advocates of the High Court of Kenya or persons registered under the Private Security Regulation Act,2016.

Meanwhile, the ACA has limited the recordal process to processing applications for recordal, renewal, change of name and change of ownership of trade marks. The ACA has prescribed fees for recordation of trade marks which can be found here.

It will take the ACA a maximum of thirty (30) days from the date of submission of applications to process the trademark applications for recordal under phase one. The ACA will then publish a monthly newsletter indicating the IPRs that have been successfully recorded.

Phase 2 – Declaration of Intellectual Property Rights Particulars for Imported Goods

Once the ACA develops a sufficient database of intellectual property rights it intends to roll out phase 2 of the recordation process. The ACA will require persons other than registered IPR owners intending to import any goods, for commercial purposes, to declare their associated intellectual property rights by filling the prescribed form ACA 2B. Failure to declare the associated IPRs, may attract the penalties discussed above.  

Phase 3 – Security Device

The ACA is still developing modalities on rolling out the security device which would essentially be an anti- counterfeit security device. The ACA would issue the security device to an importer of goods bearing a recorded trade mark.

As indicated, it is important to record your trade marks with the ACA if you are an owner of a valid registration to enable the ACA possess knowledge of the status of the trade mark and the persons to be contacted in case of suspected infringement.

In conclusion, we urge IPR owners to commence submitting applications for recordal of their IPRs to ensure compliance with the Anti-Counterfeit Act, 2008 and to prevent importation into Kenya of infringing foreign goods. The team at Bowmans is available to assist with enquiries and lodging of applications.