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Legislation Progress on the Anti-Counterfeit Act Regulations

2 August 2021
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In early 2019, several amendments were made to the Anti- Counterfeit Act (the Act) which led to the release of the Anti- Counterfeit (Amendment) Regulations, 2019 (the Draft Amendment Regulations) by the Anti- Counterfeit Authority. The Draft Amendment Regulations were essentially intended to bring into effect the aforesaid amendments and other provisions of the Act. We discussed these developments in our memos to you here and here.

On 23rd July 2021 the Cabinet Secretary for the Ministry of Industrialization, Trade and Enterprise Development gazetted by a Special Issue the Anti- Counterfeit (Amendment) Regulations, 2021 vide Legal Notice No. 117 and the Anti- Counterfeit (Recordation) Regulations, 2021 vide Legal Notice No. 118 (collectively the 2021 Regulations).

In line with the requirements under the Statutory Instruments Act, 2013, the 2021 Regulations will now be submitted to the relevant House of Parliament (the House) for scrutiny within seven (7) days from the date of publication for tabling before the House which shall refer the same to the relevant House Committee to carry out the scrutiny exercise. The House Committee may either exempt the 2021 Regulations from scrutiny, annul or revoke the 2021 Regulations. If the relevant Committee does not make a report on revocation of the 2021 Regulations within twenty-eight (28) days from the date of referral or such other approved period by the House, the 2021 Regulations will be deemed to have met the requisite considerations outlined in the Statutory Instruments Act, 2013.

Parliament’s decision is therefore now awaited before the 2021 Regulations can take effect. As a recap, some of the key changes proposed by the Regulations are:

  1. Guidelines on the recordal of intellectual property rights by the Anti-Counterfeit Act – the Anti- Counterfeit (Recordation) Regulations, 2021 prescribe the manner in which the recordal applications will be handled thus bringing effect to Section 34B of the Act.
  2. Procedure on appointment of agents – the Anti-Counterfeit (Amendment) Regulations 2021 prescribe the procedure to be followed in appointing and de-registering agents selected by intellectual property right owners to act on their behalf.
  3. Procedure on handling applications for compounding of offences – Section 34A of the Act allows the Executive Director of the ACA to order a person who has committed an offence under the Act to pay a sum of money as well as order anything liable for forfeiture in connection with the offence to be forfeited. The Anti – Counterfeit (Amendment) Regulations prescribe the procedure to be followed in relation to applications for compounding of offences.

A notable change in the Anti- Counterfeit (Recordation) Regulations, 2021 from the earlier published version in 2019 is the reduction of fees payable in relation to the recordal process.

However, the Anti – Counterfeit (Recordation) Regulations have still not provided the fees payable for an anti-counterfeit security device as alluded to in Section 34(B)(13) of the Act.

In conclusion, we would urge intellectual property rights holders to assess the new procedures provided under the 2021 Regulations with particular focus on the recordal system in relation to their business operations and the intellectual property rights protection regime in Kenya to ensure compliance accordingly.