A Practical Q & A Guide On Intellectual Property Protection In Kenya

Intellectual Property is the cornerstone of innovation and creativity yet many Kenyan creators, entrepreneurs and businesses overlook its value until infringement strikes. From brand names and software to original music and product designs, intellectual property rights protect the intangible assets that drive business growth and competitive edge. This Q&A unpacks the essentials of intellectual property in Kenya to help you navigate the local intellectual property landscape.

Q1: What qualifies as Intellectual Property in Kenya?

Intellectual Property in Kenya refers to creations of the mind that can be legally protected. These include:

· Trademarks: These are distinctive signs such as names, logos, symbols, slogans or a combination thereof that identify and differentiate the goods or services of one proprietor from those of others. In Kenya, trademarks are protected under the Trademarks Act (Cap. 506) and are registered through the Kenya Industrial Property Institute (KIPI).

· Patents: A patent is an exclusive legal right granted for an invention, which must be novel, involve an inventive step (non-obvious) and be industrially applicable. Patents are protected under the Industrial Property Act (Cap. 509) and are registered through KIPI.

· Copyrights: These protect original expressions of ideas in tangible form, including literary works, music, film, software and artistic creations. Copyrights are protected under the Copyright Act (Cap. 130) and are registered through Kenya Copyright Board (KECOBO).

· Industrial Designs: These cover the visual or aesthetic features of a product, such as a shape, pattern or ornamentation, that appeals to the eye and distinguishes the product’s appearance. They are also protected under the Industrial Property Act (Cap. 509) and are registered through KIPI.

· Utility Models: Utility models protect minor or incremental technical innovations that may not meet the full threshold of inventiveness required for a patent but still offer functional novelty. Utility models are protected under the Industrial Property Act (Cap. 509) and are registered through KIPI.

· Plant Breeder’s Rights: Plant Breeder’s Rights confer exclusive rights to breeders of new plant varieties that are distinct, uniform and stable. They are administered by the Kenya Plant Health Inspectorate Service (KEPHIS) under the Seeds and Plant Varieties Act (Cap. 326).

· Trade secrets: A trade secret is any confidential business information that provides a company with a competitive advantage. In Kenya, trade secrets are safeguarded under common law principles of confidentiality, meaning they do not require formal registration. The protection lasts as long as the information remains confidential. To safeguard your trade secrets, it is essential to implement non-disclosure agreements (NDAs), employee confidentiality agreements and maintain robust internal security measures.

Q2: How can I protect my business's name and logo?

To protect your business name and logo, you should register them as trademarks at KIPI.

The trademark registration process in Kenya involves several steps: conducting a search at KIPI to ensure availability, filing a trademark application, undergoing examination (which may result in approval, conditional approval or refusal, with an option to appeal), advertising the application in the Kenya Industrial Property Journal for sixty (60) days to allow for oppositions and finally issuance of the certificate of registration if no opposition is filed. The registration shall be effective from the filing date.

Q3: Which rights does trademark registration provide?

In principle, trademark registration will give the owner of the registered mark the exclusive right to the use of the trademark. This means that a trademark can be exclusively used by the registered owner, or it can be licensed to a third party.

Q4: What does copyright protection cover?

Copyrights apply to a variety of creative works including: literary works, musical works, artistic works, dramatic works, audio-visual works, sound recordings, broadcasts and computer programs. A more detailed explanation of the registration of copyrights is provided in our article here.

Q5: What rights does the copyright owner have?

A copyright owner holds two key types of rights:

a. Economic rights grant the creator the exclusive ability to commercially exploit their intellectual works. These rights include the ability to reproduce the work (such as making copies or recordings), perform it publicly (like staging plays or playing music), distribute it (for instance, selling books or broadcasting films) and adapt or translate it into other forms (such as turning a novel into a screenplay). These rights enable the creator to license, sell or otherwise benefit financially from their original work.

b. Moral rights, on the other hand, protect the personal and reputational interests of the creator, regardless of who owns the economic rights. They include the right to be recognized and credited as the author of the work and the right to object to any distortion, mutilation or other derogatory treatment of the work that could harm the creator’s reputation. These rights reflect the personal connection between the creator and their creation and are non-transferable in Kenya, even when economic rights are assigned.

Q6: Can I use someone else’s images or text from the internet?

Using images or text from the internet without proper authorization can lead to copyright infringement under the Copyright Act (Cap 130). To legally use such content:

· Obtain Permission: Contact the copyright owner to request permission or a license to use the material.

· Use Licensed Content: Utilize content available under licenses like Creative Commons, ensuring you comply with the license terms.

· Public Domain: Use works that are in the public domain, which are free from copyright restrictions.

· Fair Use Consideration: In some cases, using portions of copyrighted material without permission may be permissible under the fair use doctrine, especially for purposes like criticism, comment, news reporting, teaching, scholarship or research. However, fair use is a complex legal standard evaluated on a case-by-case basis.

Q7: What is the status of AI-generated works under copyright law in Kenya?

The relationship between artificial intelligence and copyright law in Kenya has not been addressed by the courts and there is currently no specific law on how AI-generated works are treated under intellectual property.

Under the Copyright Act (Cap 130), protection is granted only to legal and natural persons, meaning that AI cannot claim authorship or ownership of copyright in Kenya. However, if AI is used as a tool under human guidance, the human creator may claim copyright. This area is evolving and future case laws could influence how AI-generated works are treated under copyright law in Kenya.

Q8: Is software protected under copyright or patent law in Kenya?

Software is primarily protected under copyright law in Kenya, as a literary work. However, software that includes a novel technical solution or industrial application may also be

protected under patent law, provided it meets patentability standards of novelty, non-obviousness and industrial applicability.

Q9: What steps should I take to patent an invention?

The patent registration process in Kenya begins with filing an application at KIPI, including a detailed specification with claims, drawings, and an abstract, along with applicant and inventor details. After submission, the application undergoes a formal examination to verify compliance with filing requirements, followed by a request for substantive examination (which must be made within three years of filing) and payment of prescribed fees. The application is then published in the Kenya Industrial Property Journal within eighteen (18) months of filing, subject to payment of publication fees. If approved, the patent is granted and a Certificate of Grant of Patent is issued.

A more detailed explanation of the requirements and procedures for registering patents in Kenya is provided in our article here.

Q10: How do I handle intellectual property rights when hiring contractors?

It is important to ensure that your contract includes a work-for-hire clause that assigns intellectual property ownership to the hiring party or an intellectual property assignment agreement, that explicitly transfers rights to the employer. Without this, the contractor may retain ownership.

For a deeper understanding of intellectual property rights in contractor agreements in Kenya, refer to our article here.

Q11: How long does intellectual property protection last?

Copyright protection in Kenya lasts for the lifetime of the author plus fifty (50) years after their death. For works created by corporate entities, the duration may vary based on the type of work and applicable provisions.

Trademarks can be protected indefinitely, provided they are renewed every ten (10) years and continue to be used in commerce.

Patents are granted for a fixed term of twenty (20) years from the date of filing and are not renewable after expiry.

Utility Models are protected for ten (10) years from the date of filing, with no option for renewal.

Industrial Designs are initially protected for five (5) years and can be renewed twice, each for an additional five (5) years, giving a maximum protection period of fifteen (15) years.

Plant Breeder’s Rights are granted for a period ranging from twenty (20) to twenty-five (25) years, depending on the specific plant species involved.

Conclusion

Intellectual property in Kenya is not reserved for large corporations or artists alone. Whether you are designing logos, developing software or launching an innovative product, intellectual property provides a critical competitive advantage in today's market. By understanding and leveraging these tools, you can safeguard your innovations and ensure long-term success in a competitive landscape.

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 intellectual property rights with the Anti-Counterfeit Authority as well as monitoring and enforcement of intellectual property rights. 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 mchore@cmadvocates.com