By Victor Orandi
A trademark is a sign which distinguishes the goods or services of one person or organization from those of the competitors. A trademark can be a word, symbol, slogan, device, brand, signature, or any combination of these.
Trademarks are territorial in that they are recognized only in the country of registration. A trademark registered in a foreign country will only be protected within the jurisdiction of the foreign country.
At the international level, an applicant can file a trademark application with the trademark office of each country in which he is seeking protection or utilize the World Intellectual Property Organization’s (WIPO) Madrid System.
The Madrid System makes it possible to protect a trademark in 125 countries, including Kenya, by filing a single application and paying one set of fees. Thus, obtaining an international registration in each of the designated states within the 125 countries.
Kenya Industrial Property Institute (KIPI) is mandated to facilitate and undertake the registration of trademarks in Kenya. However, a trademark registered through the Madrid System shall be recognized and protected in Kenya has a duly registered mark provided the applicant designated Kenya as one of the countries the applicant is seeking trademark protection.
A certificate of registration is issued upon the conclusion of a successful application.
However, registration of the trademark in any respective country will not offer sufficient protection and compliance when importing goods into Kenya.
Thousands of goods are imported into Kenya every year with attached trademark rights and brand recognition. According to the class under which it was registered, the owner of a registered trademark in relation to these goods will have a monopoly right to use their trademark.
The owner shall be protected from competitors who may want to take advantage of the established trademark to further their businesses. A registered name or logo ensures that there will be no confusing similar trademark or goods out there that may dilute the owner’s brand.
According to the Kenya Institute for Public Policy Research and Analysis and reports from the Anti-Counterfeit Authority (ACA), one (1) in every five (5) products sold in the Kenyan market is counterfeit, and that close to 4 million Kenyans are currently using counterfeit products, posing a severe threat to their health, security and the economy of the country.
Counterfeit goods hinder consumers’ opportunities to enjoy the benefits derived from genuine products and they lead to unfair commercial competition. In the long run, counterfeiting undermines intellectual property rights and restricts innovation and skills development.
The Anti-Counterfeit Act of 2008 was amended to recognize intellectual property (IP) rights on goods subject to counterfeit claims. The Anti-Counterfeit (Recordation) Regulations, 2021 were implemented to give effect to this amendment. The ACA now has the mandate to register trademarks relating to goods to be imported into Kenya, irrespective of the prior registration. This process is known as recordation.
Through recordation, an importer can register the IP of their imported goods with the ACA to get sole importation rights to such goods based on the proprietorship of the IP. The purpose of this process is to reduce the number of counterfeit goods imported into Kenya.
Other key issues to note on this include;
Once an importer of goods has complied with the recordation guidelines, the ACA will issue a certification mark in the form of an anti-counterfeit security device at a fee.
The Authority may seize and destroy any goods imported into Kenya that do not bear the anti-counterfeit security device.
It is mandatory for every IP rights owner to record the trademark or copyright (IP Rights) related to the goods imported into Kenya with the ACA. The IP owner may be represented by an agent duly admitted to practise before the ACA.
Any person who imports into Kenya any goods bearing a trademark, trade name or copyright that has not been recorded with the Authority may be liable to imprisonment for a term not exceeding five years and/or to a fine not less than three times the value of the prevailing retail price of the goods.
Therefore, it is important for every company or individuals importing goods into Kenya to identify the applicable IP Rights in relation to the imported goods for recordation. The recordation system will enable the ACA to seize, destroy or exclude infringing goods and also notify the IP Rights owner or his agent if it identifies counterfeit goods in Kenya.
Victor Orandi is an Associate at Matthew & Partners LLP in the Intellectual Property (IP) and Data Protection department. He assists clients with regulatory and enforcement advice and dealing with the applicable registries to record and register various IP rights pertained in trademarks, copyrights, patents, and trade secrets. He also assists in licensing IP rights, drafting licensing agreements, negotiating settlements, and conducting IP asset due diligence.
He is a key member of our IP and Data Protection team and has been at the fore of the developments of IP and data protection and privacy in Kenya and has advised both local and international clients.
Victor holds a LL. B degree from Kenyatta University and a post-graduate Diploma from the Kenya School of Law.