The Anti-counterfeit Act, Number 13 of 2008, (“the Act”) was amended through the Statute Law (Miscellaneous Amendments) Act Number 18 of 2018 (the Amendment Act). A key amendment introduced under the Amendment Act was, the mandatory recordation of Intellectual Property Rights (IP Rights) with the Anti-counterfeit Authority (“the ACA”).
Although the Amendment Act came into force in January 2019, the proposed amendments affecting the Act had not yet been operational. Over the past year, the ACA has engaged key stakeholders in the review of the draft regulations for the implementation of the amendments. The ACA is also setting up systems (including a possible online portal) for the recordation process.
On 23rd July 2021, the Anti-counterfeit (Amendment) Regulations, 2021 (“Amendment Regulations”) and the Anti-Counterfeit (Recordation) Regulations, 2021 (“the Recordation Regulations”) were published under Legal Notice number 117 of 2021 and 118 of 2021 respectively.
The Amendment Regulations provide for the admission of agents to practice before the ACA. The agents shall be required to apply for admission and maintain their admission through renewals. Only admitted agents will be able to represent IP right owners before the ACA.
The Amendment Regulations also provide the form to be used in an application for compounding of offences under section 34A. Compounding of offences allows the Executive Director to issue orders, enforceable in the same manner as a court decree, without the prosecution of a matter where the accused admits to committing the offence. Compounding is available for offences for which a fine is provided in which case the Executive Director ay order the payment of money not exceeding the prescribed fine. Once an application for compounding is made, the Executive Director may either accept the application and make the necessary orders or reject it with reasons and allow the person to be prosecuted in court.
The Amendment Regulations also recognize the resolution of disputes out of court by way of settlement between the parties. However, any such settlement will only be recognized if entered into with the concurrence of the ACA.
The Recordation Regulations provide for the mandatory recordation, by the IP right owner, of IP Rights relating to goods to be imported into Kenya. In addition, the Recordation Regulations also provide that any person, other than the IP Right owner, importing any goods into Kenya should notify the ACA of the particulars of those goods. However, recordation and/or notification is not required for the importation of raw material, that is, items used as ingredients in the manufacture of goods.
Upon approval of the application, the ACA shall issue a certification mark in the form of an anti-counterfeit security device to the importer of goods. ACA shall have the power to seize and destroy any goods imported into Kenya, which do not bear the anti-counterfeit security device.
A recordation 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 IP Right, whichever is shorter. An application for the renewal of a recordal should be filed at least thirty (30) days before its expiry.
The Recordation Regulations also outline the fees and provide the forms to be used for an initial recordal, a renewal application, submission of particulars of imported goods and application for recording changes in name of proprietor or ownership of the IP Right.
Finally, the Recordation Regulations make it an offence to provide false information in relation to an application, to alter, deface or remove any information on any form or entry made under the Regulations. Any person convicted of the offences shall be liable to imprisonment for a term not exceeding six months or a fine not exceeding six thousand Kenya shillings (approximately US$ 60) or to both.
Kenya now joins other countries, including South Africa, Morocco, United States of America, Argentina and China, which rely heavily on border enforcement by use of custom recordation to prevent the proliferation of counterfeit products into their markets. By use of the recordation system, the ACA will detain, seize or exclude infringing goods and immediately notify the IP Right owner or his agent if it encounters a suspect shipment.
Following the official publication of the Recordation Regulations, it is expected that the ACA will roll out the online recordation system to facilitate the recordation process. We shall notify you once the online recordation system has been rolled out.
Read the original publication at CFL Advocates.