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John Syekei

John Syekei

Head of IP and Technology
Nairobi, Kenya: Coulson Harney LLP
T: +254 20 289 9000
E: john.syekei@bowmanslaw.com
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  • Overview
  • Experience
  • Publications & Insights

Overview

John Syekei is a partner in our Nairobi office and heads the Intellectual Property and Technology practice group in East Africa.  John is a member of the Firm’s Management Board.

His practice areas and experience cover commercial intellectual property advice, Technology law, E-Commerce, Payments, Fintech, advertising law and litigation, data privacy, advice on drafting and/or negotiation of information technology agreements, and advice on the protection and enforcement of trademark, patent, copyright and industrial designs. He also regularly advises on IP Litigation and dispute resolution covering trademarks, patents, designs, breach of IT contracts, anti-counterfeiting raids, IP due diligence, licensing, franchise agreements and domain name dispute resolutions.

John is regionally and globally renowned for his excellence in the IP space, and has received several top citations and recognitions from international directories such as Chambers Global, World Trademark Reviews, IP Stars and WIPR Leaders.  Most recently he was ranked as a WTR Global Leader by the World Trademark Review. He was recently awarded Kenya practitioner of the Year, 2023 by Managing IP.

On the IT/TMT side, John advises a number of leading technology companies in the world including Uber, Google, Microsoft, Facebook and IBM. He also acts as the Kenyan counsel on regulation, compliance and corporate matters for Philip Morris International, Proctor & Gamble, IBM and Uber.

Over the years, John has established a formidable reputation within the E-Commerce and FinTech space. He regularly advises FinTech clients on matters relating to Corporate Governance; Information Technology; Financial Services Regulation; Mobile Money and Payments Law.  He has written extensively on topical issues around this area, and a number of his articles have been published on international platforms such as Lexology. John is also well known for its ‘outstanding’ capabilities in Data Protection and Cyber Security.

John is  a member of International Trademark Association East Africa (INTA), International Federation of Intellectual Property Attorneys (FICPI), International Bar Association (IBA), International Trade Mark Association (TOPC committee member), World Trademark Review (WTR), American Chambers of Commerce (AMCHAM). He also serves as the Vice chair Africa- Lex Mundi IP practice group.

In May 2021, John successfully completed the Leadership Training Programme organised by the International Bar Association.

He is an Advocate of the High Court of Kenya as well as a Patent Agent, Commissioner of Oaths and a Notary Public.  He holds a LLB from Moi University.

Specialist Services

Relevant Experience

Recent Anti-counterfeit transactions

  • Skechers USA Inc. II through Adams & Adams in relation to the sale and advertising of counterfeit goods bearing SKECHERS trademarks.
  • Canon Kabushiki Kaisha on online enforcement and related anti-counterfeiting enforcement actions in relation to the CANON trademark.
  • Chanel Limited through Adams & Adams on anti-counterfeiting enforcement actions in relation to the CHANEL trademarks.
  • Advised ADIDAS GmbH in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency resulting in the successful raid, seizure and destruction of a consignment of counterfeit products at the Port of Mombasa that were infringing on the protected trademark rights of ADIDAS.
  • Advised Glaxo SmithKline in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency and the Commissioner for Customs resulting in the successful raid, seizure and destruction of a consignment of counterfeit products infringing on the protected trademark rights of GSK.
  • Advising Microsoft Corporation on legal compliance issues in software counterfeits.
  • Advising Oracle Corporation on legal compliance issues in software counterfeits.
  • Advised Reed Elsevier (UK) Limited, trading as Lexis Nexis, on filing a counterfeit action before the Kenya Anti- Counterfeit Agency which resulted in a successful raid and seizure of counterfeit book sets infringing on the Lexis Nexis copyright.
  • Advising Syngenta on anti-counterfeit issues in Kenya
  • Advising BASF Chemicals on anti-counterfeit issues in Kenya
  • Advising 3M Corporation on anti-counterfeit issues in Kenya
  • Advising Blount Inc, an Oregon based global agro- tools manufacturer, in several anti-counterfeit mandates over the past 3 years across the country.
  • Advising Diageo on an anti-counterfeit matter in Rwanda in relation to its JOHNNY WALKER whisky brand that originated in Dubai.

Trademark Registration

  • Alliance for a Green Revolution in Africa (AGRA) the trade mark registration strategy and assisted in trade mark registration in a number of countries in in Eastern, Southern, Western and Northern Africa.
  • Acting for Mjengo limited, a leading Kenyan company in the FMCG sector in trade mark registration strategy and assisted in trade mark registration in different countries in Eastern, Southern, Western and Northern Africa, the United Kingdom, Saudi Arabia, Yemen, the UAE, Singapore, Hong Kong and Vietnam, among other jurisdictions.
  • Advising and acting for Four Seasons Hotels Limited through Fross Zelnick Lehrman & Zissu in the protection of trade marks in Kenya, Tanzania and Zanzibar.
  • Equity Group Holdings Plc in trade mark registration strategy and assisting in trade mark registration in a number of countries and territories including Kenya, Uganda, Tanzania, Zanzibar, Rwanda, Ethiopia and the Democratic Republic of Congo, among others.
  • Diageo Group of Companies in trade mark clearance searches and registration in Kenya, Tanzania and Zanzibar and in managing client’s portfolio of trade marks in those jurisdictions.
  • Advising and acting for Standard Chartered Plc through Adams & Adams in a trade mark search and registration in Kenya.
  • ABSA in trade mark searches and registration in Kenya.
  • Advising and acting for Kenya Airways in trade mark protection in Kenya.

Trademark Litigation

  • Advised and acted for Shell Brands International AG through Adams & Adams in connection with the Infringement of various Kenya trade mark registrations in the name of Shell brands International AG and passing-off by Malindi Service Station.
  • Advising and acting for Diageo in this ongoing matter pending before the High Court of Kenya. The disputes relates to the infringement of the CAPTAIN MORGAN trade marks. There is a pending opposition before the Registrar of Trade Marks related to the dispute before the High Court of Kenya.
  • Advising Cipla Limited in relation to a dispute with Cipla’s former distributor, Lords Healthcare Ltd, who is claiming ownership of Cipla’s global trade marks, including its corporate name Cipla. The distributor is also claiming ownership of certain drug registrations, as a result of having applied for registration of those drugs.
  • Capwell Industries Limited in a suit filed by Unga Limited (the “Plaintiff”) in the High Court, Commercial and Tax Division. The Plaintiff filed the suit alleging that it is the owner of Copyright and trade mark rights in the slogan DO AMAIZEING WITH HOSTESS. It claims that Capwell’s use of the brand AMAIZE in the sale and advertising of its maize meal product is liable for copyright infringement, trade mark infringement and passing off of its DO AMAIZEING WITH HOSTESS brand. The Plaintiff has filed an application seeking an interlocutory injunction restraining Capwell from selling it’s AMAIZE branded maize meal pending hearing of the suit.
  • Bata Brands SA and Bata Shoe Company (Kenya) Limited in relation to appealing a High Court decision concerning enforcement of an (unregistered) industrial design.
  • Successfully acted for Nairobi Java House Limited in a High Court Civil Appeal in Kampala, Uganda in an appeal against the decision of the Registrar following trademark opposition proceedings.
  • Acted Eaton Towers in appeal in the High Court Civil Appeal Court in Kenya against ruling of the Assistant Registrar of Trademarks allowing opposition against registration of the “EATON TOWERS” mark.
  • Acting for Diageo Brands B.V in opposition of the registration of the BLUE LABEL.
  • Acted Google Inc in opposition proceedings relating to its “BEBAPAY” trade mark.
  • We acted for Sony Corporation in appealing in the High Court Civil Appeal against a ruling of the Assistant Registrar that allowed the Applicant’s mark to proceed for registration.
  • We acted for Diageo Brands B.V in a suit in the High Court of Kenya against Platinum Distillers.
  • Instructed by Kenya Airways to instigate arbitration proceedings in order to obtain ownership of the domain name www.kq.com. The arbitration was conducted within the auspices of the WIPO domain name dispute resolution centre.
  • Acting for Diageo Brands B.V and EABL International Limited, in close coordination with the Trust Law Chamber in Rwanda to assist the initiation of prosecution against suspects in counterfeit goods.
  • Acted for Bharti Airtel Limited, Airtel Networks Kenya Limited in a domain name disputes
  • Acted for Procter and Gamble in advertising and competition law litigation by defending a suit filed by Unilever relating to the OMO and Ariel brands.
  • Acted for Bidco Oil Refineries Limited in a litigation matter with Mt. Meru Limited in Zambia.
  • We advised Starbucks and defended it in respect of demands made by 3 individuals depicted in a mural in various Starbucks stores.

Technology, Media and Telecommunications

  • John has led a team of lawyers in Bowmans across all our offices and a network of Firms in Africa that have a privacy, technology and telecoms  focus  in advising Google  on 86 projects in  32 countries in Africa  since 2018 under the Google Hub covering:  fintech, privacy, technology, telecoms infrastructure, e-commerce , regulatory and compliance projects.
  • Jack Ma Foundation on the roll out of its African Netpreneur Prize Initiative throughout the continent.
  • A refugee protection organisation in connection with the proposed roll out of a mental health app designed to support young refugee mothers in Kenya.
  • Advised Microsoft EA Limited on the setting up of an ‘IP Hub’ which is a technology ‘space’ or forum to assist young software developers to understand intellectual property and be aware of the means available in law to protect the IP in their software so as to ultimately enable them to commercialise their IP from a point of knowledge in terms of value of their IP.
  • Advised Kopo Kopo Inc, an American entity from the Bay Area of San Francisco (Silicon Valley) as a merchant aggregator for MPESA’s buy goods functionality on the regulatory landscape relating to mobile money, and negotiated contracts with Safaricom in relation to its MPESA platform and the establishment of a mobile phone point of sale.
  • Advised on the drafting and negotiating of a co-operation agreement between Safaricom Limited and Seven Seas Technologies Limited for collaboration in the research and development of innovative technology products, including the use of cloud computing.
  • Advised Centum Investments and Etranzact, a Nigerian mobile solutions and e-commerce provider, in the establishment of a local entity under a joint venture seeking to develop electronic payment solutions for East Africa.

Data Protection

  • Facebook on their data privacy matters in Kenya
  • Google on data privacy in Kenya and 30 other countries in Africa
  • Microsoft on their data privacy matters in Kenya
  • IBM on their data privacy matters in Kenya
  • UAP Old Mutual on data privacy matters
  • Proctor & Gamble on data privacy matters
  • BASF on data privacy matters
  • Advised several clients of White & Case on data privacy matters
  • Advised several clients of Baker & McKenzie on data privacy matters
  • KPMG, working with Freshfields on certain aspects of privacy in relation to a Kenyan project
  • Advised several global clients on data privacy matters in Kenya working with international law firms in London, Washington DC, New York and Los Angeles

Others

  • Advising and acting for Blue Host Inc through Cowan, Liebowitz & Latman, P.C in BLUEHOST.CO.KE domain name proceedings. The matter proceeded to arbitration and was concluded successfully in favour of Blue Host Inc.

Awards

  • Chambers and Partners consistently ranked John in Band 1 for Corporate/Commercial: Intellectual Property for seven consecutive years (2017 to 2023) and prior to that in Band 2 for the same category (2015-2016) as well as in the FinTech Legal in Band 2 in 2022 and Band 3 in 2021.
  • Recognised as WTR Global Leader by World Trademark Review, 2021.
  • Recognised as a WIPR Leader in the 2020 and 2018 editions.
  • John is ranked in the Gold Band by WTR 1000 since 2013 up to 2020.
  • Managing IP ranked him as an IP star in 2014 and 2015, a very highly regarded recognition within the IP world.
  • Under John’s supervision, Coulson Harney won IP Team of the Year at the prestigious African Legal Awards in 2015.
  • Legal 500 EMEA 2015 listed John as recommended lawyer.

“John Syekei is very reliable and always has a solution for us.”

“John Syekei has great client service, where he leads his team to always establish ways that can bring more value to us as the client.”

“His attention to detail is brilliant and he has a great understanding of the law; he anticipates the needs of the clients.” – Chambers and Partners, 2023

“John Syekei is exceptionally responsive; he keeps us updated and provides clear feedback.”

“He proactively alerts us on recent commercial changes and takes an interest in our business.” – Chambers and Partners, 2022

“John Syekei is one of the field’s pre-eminent practitioners, offering clients the full gamut of contentious and advisory IP counsel. He is well versed in acting on infringement and enforcement disputes, as well as anti-counterfeiting and data protection. Interviewees value his propensity to exceed client expectations.” – Chambers and Partners, 2021

“John Syekei is a highly revered IP attorney, with market sources describing him as “one of the top lawyers in this space.” He operates across the full spectrum of IP issues, with notable activity in anti-counterfeiting enforcement, infringement actions and enforcement of designs. Interviewees enthuse: “He’s just very engaging, and clearly has an excellent understanding of IP law internationally and in Kenya. Just an impressive individual.”” – Chambers and Partners, 2020

Publications & Insights