Recordation Of Intellectual Property Rights For Imported Goods In Kenya

A. Background

According to a survey conducted by Anti-Counterfeit Authority’s (ACA) and dubbed 'Counterfeits and other Forms of Illicit Trade in Kenya in 2018', counterfeits accounted for 77% of the total businesses losses in 2018.’ This shows that trade in illicit products and counterfeits increased in 2018 compared to the total reported losses in 2017. Based on the international trade statistics, the total value of illicit trade was KES 726 billion in 2017 and KES 826 billion in 2018, a rise of 14%. Importation of goods to Kenya accounts for the high numbers in illicit trade and counterfeits as per the Survey. The Anti-Counterfeit Act of 2008, defines counterfeiting as acts such as the manufacture, production, packaging, labelling and distribution of goods which are identical, confusingly or substantially similar to goods protected under intellectual property rights without the authority of the registered owner. Internationally, trade-in counterfeits is considered as an organised crime. In Kenya, in order to curb this illicit trade, the Parliament of Kenya enacted the Anti-Counterfeit Act No. 13 of 2008 to prohibit trade in counterfeit goods and establish the ACA as the lead agency in fighting trade in counterfeits. By a directive of H.E. Uhuru Kenyatta, a Multi-Agency Task Force comprising of the following bodies was formed to combat illicit trade, the agencies that are involved in the fight against counterfeits include Kenya Bureau of Standard (KBS), the Competition Authority of Kenya, Weights and Measures Department under the Ministry of Trade and Industrialisation, Kenya Revenue Authority, the Pharmacy and Poisonous Board, Asset Recovery Agency, Directorate of Criminal Investigations, the Police among others.

B. Recordation of Intellectual Property Rights

Recordation is the process by which the owner or the appointed agent of the owner of imported goods, registers the intellectual property rights (IPR) in respect of any goods imported to Kenya for commercial purposes with the ACA. Raw materials used in the manufacture of goods are exempted from the recordation requirements. Intellectual property rights (IPR) are rights granted to a creator of invention, artistic and literary works, designs and symbols and names and images used in commerce. These rights are protected by law through various regimes including patents, copyrights, trademarks, plant breeder’s rights among others. In pursuit of the fight against counterfeits, the Anti-Counterfeit Act was amended in 2019 by introduction of a new Section 34B which provides for mandatory requirement for recordation of IPR relating to imported goods, irrespective of the place of registration of the IPR. Additionally, the Anti-counterfeit (Recordation) Regulations, 2021 were also enacted to provide for the mechanisms for enforcement of the recordation requirements. The Regulations requires IPR owners who import goods into Kenya to record their IPR with the ACA. Once an IPR has been recorded with the ACA and a recordation mark issued, the registrant (owner of the IP) gets an exclusive right to import into Kenya products bearing the recorded IPR. Recordation of IPR will help enhance the fight against counterfeits by having counterfeit goods confiscated at the point of entry to Kenya and before circulation in the market. The recordation requirements are thus beneficial to trademark owners as they help protect registered marks from infringement.

C. Process of Recordation of Intellectual Property Rights

Below is the process of recordation of IPR:

1. Search – The ACA maintains a register of recorded IPRs. An applicant for recordation may therefore conduct a search at the ACA in order to confirm whether the IPR has been recorded. The application for a search is made vide a prescribed form and upon payment of the application fee of USD. 5.
2. Application for recordation- an application for recordation is made with the ACA upon payment of the prescribed fee and vide a prescribed form. The application may be made by the owner or by an appointed agent of the owner. The application should contain the details of the applicant, manufacturer and place of manufacture and the samples or photographic representation of the goods and should be accompanied by the registration certificate for the IPR.
3. Grant of recordation certification mark - the ACA will examine the application and within 30 days from receiving the application, grant or refuse to grant the certificate for recordation. The anti-counterfeit recordation mark will be issued in the form of an anti-counterfeit security device.
4. Validity period - The recordation of the IPR shall remain in force for a period of one year from the date of approval of the application for recordation or the current registration period of the trademark, whichever is shorter.
5. Changes in records - If there are any changes in respect of change in ownership of a recorded IPR and the new owner wishes to continue the recordation with the ACA, the new owner shall apply immediately to the ACA for change of the records.
6. Renewal - An application for renewal of the recordation shall be made within 30 days before the expiry of the initial recordation period.

D. Impact of Non-Recordation of Intellectual Property Rights on Imported Goods

The Anti-Counterfeit Act under Section 32 as read with Section 35 creates the offence of non-recordation of intellectual property rights in respect of imported goods.

1. Imprisonment and Penalty: Any person committing the offence shall in the case of a first conviction, be liable to imprisonment for a term not exceeding five years, or to a fine of not less than three times the current value of the goods not recorded, or both and in the case of a subsequent conviction, to imprisonment for a term not exceeding fifteen years, or to a fine, not less than five times the current value of the goods, or both.
2. Destruction of the Goods by ACA: If the IPR in respect of imported goods is not registered, the ACA may seize and destroy any goods originally imported into Kenya but found within Kenya that do not bear the anti-counterfeit security device.

The ACA is in the process of setting up their online system to allow for the recordation process. In the meantime, they are accepting manual application for recordation and appointment of agents. It has been shown that recordal of IPR is effective in combating counterfeiting and protecting IPRs. Businesses should obtain and maintain the intellectual property in all relevant territories for optimal protection. Our Intellectual Property Team provides necessary legal advisory and support for the registration and recordation of your IPR in Kenya and regionally. We will assist you in ensuring that your IPR are adequately protected. Contact us through the addresses below.