The Institute implements two (2) Acts of Parliament that provide for the protection of industrial property rights, that is, the Industrial Property Act, 2001 and the Trade Marks Act, Cap 506 of the Laws of Kenya.
The following is a summary of the provisions of the said Acts:
1. Industrial Property Act, 2001.
2. Trademarks Act, Cap 506.
1. THE INDUSTRIAL PROPERTY ACT, 2001:
The Industrial Property Act provides for:
(a) establishment of the Institute as a body corporate;
(b) mandate of the Institute;
(c) establishment of the Industrial Property Tribunal;
(d) applications for and registration of industrial designs;
(e) applications for and registration of utility models;
(f) applications for and grant of patents;
(g) publication of applications and granted patents as well as registered utility models and industrial designs in the Kenya Gazette or the Industrial Property Journal;
(h) criminal and civil enforcement;
(i) contractual licenses;
(j) term of protection of a patent, a registered utility model or industrial design;
(k) change of ownership; and
(l) compulsory licenses, parallel imports and third party or Government use.
Regulations and Rules 2
The Industrial Property Regulations, 2002 have been made for purposes of implementing the Industrial Property Act and prescribe for procedure, forms and fees. The Industrial Property Tribunal Rules, 2002 provide for procedure, forms and fees for proceedings filed before the Tribunal.
Kenya is a member of the African Regional Intellectual Property Organisation and is a signatory to the Harare Protocol on Patents and Industrial Designs. The Act complies with the provisions of the said Protocol.
Kenya is a member of the World Intellectual Property Organisation and the World Trade Organisation. Kenya is a signatory to the TRIPS Agreement, the Patent Cooperation Treaty and the Paris Convention and the provisions of the Act conform to the provisions of the said international instruments.
Section 109 of the Act provides as follows:
(1) Any intentional infringement of the patent or the registered utility model or industrial design shall constitute an offence under this Act.
(2) Such an offence shall be punishable with a fine of not less than ten thousand shillings, and not exceeding fifty thousand shillings, or with imprisonment for a term of not less than three years, and not more than five years, or with both.
Once a patent, a registered utility model or industrial design is infringed upon, the owner may report to the Police, the Weights and Measures Department or the Anti-Counterfeit Agency for investigation and prosecution. An Officer from the Institute would then be called as a prosecution witness to confirm the validity of the patent, utility model or industrial design.
Section 113 of the Industrial Property Act establishes the Industrial Property Tribunal. The mandate of the Tribunal is to hear and determine disputes relating to patents, industrial designs, utility models and technovations in the following circumstances:-
(a) appeals against any decision by the Managing Director in his implementation of the Act;
(b) applications for grant of compulsory licenses to exploit a patented invention for non-working reasons under Section 72;
(c) applications for cancellation of compulsory licenses by any interested party, or by the Minister or owner of the patent under Section 77;
(d) appeals from the decision of the Minister on exploitation of patented inventions by the government, or by third parties authorized by the government under Section 80(11);
(e) applications for revocation of a patent, industrial design or utility model under Section 103; and
(f) applications for injunctions to prevent infringement of a patent, industrial design or utility model or for continuation of such infringement and damages under Section 106.
Section 115 of the Act provides that any party that is aggrieved by the decision of the Tribunal may appeal to the High Court of Kenya.
2. THE TRADE MARKS ACT, CAP 506
The Trade Marks Act provides for protection of trade and service marks. The following is a summary of the provisions:
(a) requirements for registration of a trade mark;
(b) examination of the application;
(c) publication of a trade mark application in the Kenya Gazette or the Industrial Property Journal;
(d) opposition proceedings;
(e) registration of a mark for an initial period of ten years which may subsequently be renewed after every ten years;
(f) licensing of marks;
(g) assignment of marks;
(h) maintenance of the Register of Marks in terms of among others, change of name or address; and
(i) expungement proceedings.
The Trade Mark Rules prescribe the procedure, forms and fees for purposes of all the matters provided for under the Trade Marks Act.
The Trade Mark (International Registration) Rules, 2003 provide for procedure under the Madrid System for registration of international marks.
Kenya is a member of the World Intellectual Property Organisation and the World Trade Organisation. Kenya is a signatory to the TRIPS Agreement, the Trade Marks Law Treaty, The Madrid Protocol, the Madrid Agreement and the Paris Convention and the provisions of the Act conform to the provisions of the said international instruments.
Sections 58C and 58E provide that it is a criminal offence to infringe on a registered trade mark. Once a registered mark is infringed upon, the owner may report to the Police, the Weights and Measures Department or the Anti-Counterfeit Agency for investigation and prosecution. The Registrar of Trade Marks would then be called as a prosecution witness to confirm the validity of the mark on the Register.
(a) Section 5 provides for passing off proceeding in the case of unregistered marks;
(b) Section 7 provides for infringement proceedings in case of registered marks;
(c) The Act provides that the High Court hears and determines passing off proceedings and infringement proceedings.
Any person aggrieved by the decision of the Registrar of Trade Marks may appeal to the High Court of Kenya.