Adams & Adams Partner and Head of our Anti-Counterfeiting Department, Godfrey Budeli, recently met with Dr Robi Mbugua Njoroge, the current CEO of the Anti-Counterfeit Authority (ACA), together with the ACA Management, Legal and Compliance, Investigations and Recordation teams at the ACA’s Headquarters in Nairobi, Kenya.
Discussions focused on the ACA’s readiness with the impending implementation of the mandatory recordal system, as well as reinforcing our collaboration with the ACA. Despite challenges experienced with the proposed system, the ACA is adamant that it is unlikely that the implementation date will be extended beyond 1st January 2023. Therefore, it is critically important that all entities with a business interest in Kenya which require goods to be imported into that country take steps to file a recordal application with the ACA as soon as possible.
It should be noted that the implementation date of the legislation which introduces this mandatory recordal system is 1st January 2023, however, applications can be filed at any stage before or after this date and will be valid for a year after which an application for renewal will have to be made.
Although there appears to be some discrepancy between the Regulations and the advice given to us by the ACA, we are assured that it is not necessary to record each and every registered intellectual property right (IPR) associated with the goods in question. If the products bear the house and sub-brands, it should be sufficient to only record the house brand/s in the relevant classes in certain instances. That said, it is important to thoroughly review the IPR owner’s registered IPR’s in Kenya (or in other jurisdictions), as well as the actual products sold or distributed in Kenya to make an informed decision as to which trade marks are to be included in the recordal
Section 34B(1) of the Anti-Counterfeit Act states:- “trade marks relating to goods to be imported into Kenya, irrespective of the place of registration, shall be recorded with the ACA, in the prescribed manner if the registration is current”. Therefore, the law is quite clear that irrespective of the place of registration, the ACA requires IPR owners to record the relevant IPR for all goods to be imported into and sold in Kenya for commercial purposes. Recordal applications based on the international or foreign registration/s will meet the recordal requirements.
In instances where a product incorporates the house and sub-brands or is the subject of a registered Patent, Design or Copyright, we have been assured by the ACA that there is no need to record the relevant sub-brand, Patent, Design and Copyright. The AIMS recordal system is currently only configured to cater for recordal of Trade Marks and Designs.
The requirements for successful recordal are onerous requiring the filing of certified copies of the IPR’s issued by the Registering Authority i.e. KIPI in advance of the recordal application and these may naturally take some time to be issued.
The ACA is aware of the concerns over implementation of the Regulations and the effect that this may have on the business operations of entities who have operations in Kenya. However, they have assured us that their current focus is on the recordal of Trade Marks only. The idea is, if a product has multiple IPRs, the Applicant would only be required to record the most conspicuous / prominent IPR which can easily be identified by an ACA / Customs official during the physical inspections of containers at the ports of entry which, in most cases, is the trade mark.
IPR owners are naturally anxious at the possibility of disruptions to their operations in Kenya. We remain in constant communication with the ACA and shall keep you updated with any developments.
In the meantime, we urge all IPR owners to contact us at firstname.lastname@example.org to enquire about the costs and requirements for recording their rights in Kenya as soon as possible and begin to obtain the information and documentation to file the recordal application as soon as possible in light of the imminent deadline.