The Long Awaited Anti-Counterfeiting (Recordation) Regulations Have Finally Been Published

In January 2019, the Statute Law (Miscellaneous Amendments) Act of 2018 was enacted by the Parliament of Kenya to introduce some amendments to various intellectual property legislations including the Anti-Counterfeit Act of 2008 (‘the Act’).

Amongst others, the name of the Anti-Counterfeit Agency was changed to the Anti-Counterfeit Authority and, most importantly, the Act made provisions for the formal recordal applications of intellectual property with the Anti-Counterfeit Authority. The Act provides that an application for recordal shall be made in a prescribed manner and accompanied by a payment of prescribed fees. However, the implementation was put on ice awaiting the publication oof the relevant Regulations.

The Anti-Counterfeit (Recordation) Regulations (the Regulations) were published on 23^rd July 2021 in terms of Legal Notice 118 of 2021) link here. The Regulations provides that an application to record an intellectual property right relating to goods to be imported into Kenya shall be made by the owner of the intellectual property in a prescribed form and accompanied by the payment of prescribed fees. The relevant forms and official fees are set out in the First and Second Schedules to these Regulations.

Upon receipt of the recordal application, the Anti-Counterfeit Authority shall notify the applicant of the approval or rejection of the application in writing. If approved, the recordal will be valid for 12 months renewable, in a prescribed form and accompanied by payment of the relevant fee, a month before its expiry date.

The following information and/or documentation is required in support of the recordal application:

• Name of the owner of the intellectual property right (the Applicant);
• the Applicant’s contact details and address;
• Name and contact details of the Applicant’s agent or local distributor, if any;
• Properly signed Power of  Attorney;
• Copies of the certificate of registration or renewal of the intellectual property right/s;
• Samples or digital images of the Applicant’s protected goods ;
• Name, contact details and address of each foreign person or business entity authorized or licensed to use the Applicant’s intellectual property right;
• The identity of any parent or subsidiary company or other foreign company under common ownership or control which uses the intellectual property right abroad; and
• Place of manufacture of genuine goods (i.e. goods bearing the recorded intellectual property right/s).

This is an exciting legislative development in the fight against the rampant importation (and perhaps smuggling) of counterfeit goods into the Republic of Kenya. This development will no doubt boost the Anti-Counterfeit Authority’s moral and enforcement drive and also encourage other East African Nations (and other countries in Africa) to follow suit.

The Anti-Counterfeit Authority is currently engaging various stakeholders regarding implementation of recordal process and it is expected that an online system maybe introduced to facilitate the smooth running of the process.

We are continuing to monitor the situation and will provide further information/details regarding the implementation of the recordal process in due course.