With recent changes to legislation, importers are urged to ensure that their intellectual property ("IP") rights are correctly registered under the relevant IP regimes and to ensure that they are in possession of registration certificates evidencing their ownership. This will allow them to record their IP rights in respect of imported goods with the relevant anti-counterfeit authority. These IP Rights include: copyright, plant breeders rights, trade marks and all rights under the Industrial Property Act (patents, utility models, industrial designs).
In January of 2019, The Anti-Counterfeit Act, 2008, was amended, through the Statute Law (Miscellaneous Amendments) Act, 2018 to include section 34B, introducing IP rights into the ambit of the Act. In addition, the Anti-counterfeit (Recordation) Regulations, 2021 were drafted and tabled in parliament for implementation in conjunction with the new section. The Regulations have since been gazetted and await the go-ahead from parliament to be implement, which is anticipated to be mid-September.
what is recordation?
Recordation is a process through which an importer can gain control over the importation of such goods based on the ownership of IP. The aim is to reduce the amount of counterfeit products (including parallel imports) being imported into the country. Once recordation is completed, an owner of the IP rights or their agent (which could include distributors, licensees or assignees) is granted the exclusive rights to import the goods into Kenya and any other party wishing to import the same product will have to get the express authorisation of the Anti-counterfeit Authority (the "Authority").
what is the process?
IP rights relating to goods to be imported into Kenya, irrespective of the place of registration, are to be recorded with the Authority in the prescribed manner, provided that such IP rights are registered and valid. The Regulations provide a framework for the procedure for recordation of IP and, unless any changes are made between now and the Regulations being implemented, the procedure will be as follows:
- an application should be made to the Authority by the owner of the IP or their appointed agent, together with the prescribed fee, in respect of the goods being imported into Kenya;
- the Authority will, in writing, notify the applicant of the success or failure of their application, no later than 30 days from the application date; and
- the Authority, upon satisfying itself that the imported goods have complied with recordation provisions, will issue, at a cost, the importer with a security device that the importer will be able to use on their imported goods to certify the goods as authentic.
The Authority will have the power to seize and destroy any goods imported into Kenya in relation to the same IP not bearing the anti-counterfeit security device
validity and ownership changes
The recordation of the IP will last for a period of one year from the date of approval of the application or for the current registration period of the IP, whichever is shorter. In order to extend the validity of the recordation, one must apply to have the recordation renewed no later than 30 days to the expiration of the current recordation.
The recordation of the IP may be amended where there is a change in the ownership of the IP rights and the new owner wishes to be the owner of the recordation rights, too. The new owner simply has to make an application to the authority to have the rights transferred. If the new owner does not wish to have the recordation rights transferred, the authority must be notified.
searches on register
As part of the recordation process, the Authority will maintain an official register where all recordations will be reflected. This will allow stakeholders to conduct official searches into IP rights in order to establish any particulars relating to recorded IP rights. This will hopefully achieve one of the objectives of the Authority, ie, to ensure that all goods imported into Kenya are imported by the registered IP rights owners, their agents, assignees or licensees. It is the Authority's hope that this will, in turn, lower if not eradicate the amount of counterfeit products in the Kenyan market.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.