On 23rd July, 2021, the Anti-Counterfeit (Recordation) Regulations, 2021 (“the Regulations”) came into effect implementing the Statute Law (Miscellaneous Amendments) Act, No. 18 of 2018. The Regulations formalized the requirement of the mandatory recordation of Intellectual Property Rights(“IPRs”) with the Anti-Counterfeit Authority (“ACA”), a move aimed at strengthening the protection of intellectual property and combating counterfeiting.
The recordation of IPRs refers to the process of collecting and entering into an electronic database, information regarding registered IPRs (such as trademarks, patents, utility models, industrial designs, copyrights, or any other registered IPR), irrespective of their place of registration, for all goods to be imported into the Kenya.
Under the Regulations, recordation of IPRs is mandatory for registered intellectual property related to goods that are to be imported into Kenya. Raw materials, however, are exempt from this obligation as they are considered essential components in the manufacturing process. As discussed in our previous article on the recordation of IPRs, the recordation process is beneficial to owners as it helps to prevent importation of counterfeit goods into Kenya thereby proactively protecting brand owners and consumers from harmful counterfeit goods.
The Regulations further stipulate that any person seeking to import goods for commercial purposes must ensure that the IPR relating to the goods are recorded. Consequently, the mandatory recordation of IPRs directly impacts importers.
The requirements for the recordation of IPRs
To comply with the Regulations, the following details are submitted when applying for the recordation of an IPR: the details of the IPR owner (including the full name, physical address and telephone number); the details of the manufacturer, foreign entities, parent company, subsidiaries and licensees if any; the samples or photographs and description of the protected goods; the details of the place of manufacture of the goods and a certified copy of the latest renewal or registration certificate for the intellectual property.
The process of applying for IPR recordation
The application to record an IPR may be made by either the owner or an appointed agent acting on the owner’s behalf. The application is made in writing in the prescribed form and is addressed to the ACA. An application for recordation costs US $90 for the first class and US $10 for each subsequent class. Upon receipt of the application, the ACA examines the application within thirty (30) days and either grants or refuses to grant the certificate for recordation. Although the Law provides that the ACA is to issue a certification mark in the form of an anti-counterfeit security device as a certification mark upon recordation, the security device has not yet been launched. Discussions regarding its launch are currently ongoing.
The recordation of an IPR is valid for a period of one (1) year from the date of approval or the current registration period of the IPR, whichever is shorter. An application for renewal of the recordation costs US $50. If there is a change in ownership of the intellectual property or name of the IPR owner, the ACA must be notified of the change in the prescribed form accompanied with a fee of US $20.
Penalties for non- compliance
It is an offence to import into Kenya, any goods bearing an IPR that has not been recorded with the ACA. In the case of a first-time conviction, the offender is liable to imprisonment for a term not exceeding five (5) years or to a fine not less than three (3) times the value of the prevailing retail price of the goods. A subsequent offender is liable to an imprisonment term not exceeding fifteen (15) years and a fine of not less than five (5) times the value of the prevailing retail price of the goods.
At CM Advocates LLP, we have a dynamic team of Intellectual Property Lawyers dedicated to helping secure all forms of Intellectual Property including trademarks, patents, copyrights, industrial designs and utility models. Our services also extend to the recordation of IPRs with the ACA as well as monitoring and enforcement of IPRs. If you would like to consult on this article or any other related matter, you may contact the contributor on the email below or the commercial team through commercial@cmadvocates.com.
Contributor
Mercy Chore, Associate