Kenya has had anti-counterfeiting legislation for many years. The Anti-Counterfeiting Act No. 13 of 2008 creates severe penalties for counterfeiting, with prison terms of up to 15 years. The legislation also makes provision for a dedicated anti-counterfeiting body, the Anti-Counterfeiting Authority (ACA). The ACA conducts raids, liaises with the prosecution authority in regard to the prosecutions, and works closely with Customs.
Recordal with Customs
For a number of years there has been talk that every brand owner who imports goods into Kenya will be required to record its trade mark with Customs - this is a separate and additional registration to a trade mark registration.
This recordal requirement is now becoming a reality. This is as a result of the publication of two new regulations under the Anti-Counterfeit Act. The first of these is the Anti-Counterfeit (Amendment) Regulations of 2021 (Amendment Regulations). The second is the Anti-Counterfeit (Recordation) Regulations of 2021. These two regulations will have significant consequences.
The recordal process
- There will now be a formal process for the recordal of a trade mark with Customs. The application must be made by the owner of the trade mark or by an authorised agent.
- A recordal fee will be payable. The fee is currently set at US$90 for the first class, and US$10 for each subsequent class – the term ‘class’ here refers to the International Classification of Goods and Services.
- The applicant will be notified within 30 days of the application as to whether the application has been approved or denied.
- The ACA will also maintain a register of all the recorded trade mark rights.
- The ACA will in future be able to issue a ‘destruction certificate’ when seized goods are destroyed.
- A law firm that wishes to represent a client at the ACA will need to apply for formal recordal as an agent - there will be an official fee of US$90. It seems that a separate fee will be payable for each client.
These changes will impose further administrative challenges on trade mark owners doing business in Kenya, not to mention costs. Yet they will hopefully also lead to a significant increase in the seizure of counterfeit goods. This will benefit all brand owners.
Read the original publication at Spoor & Fisher.