PROPOSED NEW REGULATIONS INTRODUCING CERTIFICATION MARKS AND FEES FOR COUNTERFEIT RECORDALS IN KENYA
Various important changes are planned for the administration of intellectual property rights applications in Kenya, the aim being to strengthen protection of owners’ rights and combat counterfeiting. The background to the planned changes is amendments to the Anti-Counterfeit Act (the Act) and the recent issue of the draft Anti-Counterfeit (Amendment) Regulations, 2019 (draft amendment Regulations).
Early this year, several amendments were made to the Act, after which the Anti-Counterfeit Authority (ACA) released the draft amendment Regulations for public comment. Bowmans will be attending the ACA’s upcoming public hearings and is in the process of gathering clients’ views on the proposed changes.
Some of the noteworthy provisions in the draft amendment Regulations are highlighted below.
Importers required to must apply for certification marks
The amended Act includes a provision on recordation with the ACA of trade marks relating to goods to be imported into Kenya. According to the new provision, potential applicants are required to apply for recordation of one or more trademarks, copyrights, trade names or any other form of intellectual property rights (IPR), as well as the contents of such applications and the accompanying documents. Once an application is approved, the ACA shall (for a fee) issue a certification mark to the importer of goods bearing a recorded trade mark. This certification mark is in the form of an anti-counterfeit security device.
The ACA shall have the power to seize and destroy any goods imported into Kenya and found within the country that do not bear the anti-counterfeit security device.
We are concerned that the draft amendment regulations have not addressed the features of the anti- counterfeit security device as well as measures put in place to prevent counterfeiting of the said device and we intend to seek clarification from the regulator.
Register and Code of Conduct for Agents
The draft amendment Regulations state that the ACA will now maintain a register of agents appointed by the owners of an intellectual property right. The ACA will also establish a ‘Code of Conduct’ or ‘manual’ which will be binding on all registered agents. Any appointed agent will be required to meet all conditions imposed by the ACA.
The registration of an agent will be valid for a period of one year and will automatically lapse unless renewed.
Registered agents may be deregistered if they fail to comply with the ACA’s conditions; some of the grounds for deregistration set out by the draft amendment Regulations are gross misconduct, public interest and non-performance for a continuous period of six months (among others).
Further, the appointed agents will be required to pay a registration fee that has yet to be prescribed.
We are concerned that the draft amendment Regulations have not addressed qualifications for registration of an agent as well as the requisite registration fees and we intend to seek clarification from the regulator.
New application forms and fees introduced
The draft amendment Regulations have introduced new prescribed forms for different applications under the Act. Further, a scale of fees payable for different applications has been set out. The scale is explained below. We are concerned about the basis of these fees as they appear to be on the higher side in some instances and we intend to seek clarification from the regulator.
In any event, in so far as the recordal of intellectual property rights is concerned, we intend to seek clarification from the regulator on whether the fee is applicable to the entire IPR portfolio belonging to an IPR owner or whether the fee will be applied on each IPR belonging to an IPR owner.
|
Description |
Fee (in KES) |
Fee (in USD) |
|
Application for compounding. This relates to applications made to the executive director of the ACA to order persons who have committed offences under the Act to pay a sum of money and forfeit anything liable to forfeiture in connection with the offence. |
5,000 |
50 |
|
Intellectual property right particulars for imported goods. Through this form, intellectual property right owners will submit particulars of the intellectual property right subsisting in their goods. |
2,000 |
20 |
|
Application to record intellectual property rights. |
200,000 |
2,000 |
|
Application for renewal of recordation of intellectual property right. The recordation of a trade mark shall remain in force for a period of one year from the date of approval of the application. Thereafter, a renewal will be required. |
100,000 |
1,000 |
|
Application to continue recordation on change of ownership. If there is change in ownership of a recorded trademark and the new owner wishes to continue the recordation with the ACA, the new owner shall apply for a change of ownership. |
200,000 |
2,000 |
|
Notice of change of name. If there is a change in the name of the owner of a recorded trade mark, but no change in ownership, written notice shall be given to the ACA, accompanied by the required documents. |
100,000 |
1,000 |
|
Notice of approval or denial or recordation. Applicants for recordation of trade marks shall be notified of the approval or denial of an application in a prescribed manner by notice in the Anti-Counterfeit newsletter published by the ACA. |
3,000 |
30 |
|
Application for official search. |
5,000 |
50 |
|
Security device for certification of imported goods. |
10 |
1 |
Invitation to comment on draft amendment Regulations
The ACA has invited all stakeholders to provide their comments on the draft amendment Regulations. A consultative public participation forum has been scheduled for 16 May 2019 at the Boma Hotel Nairobi from 08.30, where thoughts, questions and comments on the document will be discussed.