2013 Year in Review: Intellectual Property in Kenya

2013 was an election year for Kenya which resulted in the swearing in of Uhuru Kenyatta as the fourth President of the Republic. Kenyatta has been very supportive of the creative economy and has on several occasions reiterated his administration’s commitment to creating a conducive environment for creators to reap from their intellectual property (IP) assets. However, Kenyatta’s mark on IP this year was the decision to reform all state corporations and parastatals in Kenya which has set in motion plans to merge the copyright office, the industrial property office and the anti-counterfeit agency into one national IP office.

Copyright and Related Rights

In 2013, copyright news was monopolized by Safaricom which was embroiled with two high profile copyright cases with Faulu Kenya and JB Maina. Another popular copyright story was Longhorn’s acquisition of publishing rights for iconic educational textbooks writer, Malkiat Singh.

The year was also memorable for Kenya as she successfully negotiated and signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are BIlind, Visually Impaired or Otherwise Print Disabled.

Industrial Property

In 2013, trade marks stole the show with several far reaching rulings by the Registrar of Trademarks as well as the landmark acquisition of a local trademark by a multinational cosmetics company. In addition, trademark administration has continued to be the major revenue earner for the national IP office, Kenya Industrial Property Institute (KIPI) especially through the Madrid System.

The Red Bull case (available online) was an important decision in that it expanded the Kenyan IP jurisprudence in respect of the doctrines of “conceptual similarity” and “well-known marks”.

In the Basmati case, a clear distinction was drawn between trade marks and geographical indications within the context of Kenya’s international obligations under the World Trade Organisation (WTO) Agreement on Trade Related Aspects of IP (TRIPs) adopted in section 40A of the Kenya Trademarks Act.

In the Pyrex case (available online), the Registrar found that the withdrawal of a threat of opposition does not amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark. This ruling was important because it provides a practical application of two amended provisions of the Act, namely Section 36A and 36B of the Act.

Later in the year, one of the largest cosmetics companies in the world, L’Oréal fully acquired the health and beauty divisions of local firm, Interconsumer Products Ltd, makers of Nice & Lovely brands, in a multi-billion shilling transaction. This acquisition is seen as part of L’Oreal’s push to dominate the East Africa’s low-end cosmetic market.

Legislative Developments

As previously discussed here, several amendments have been proposed to the Copyright and the Anti Counterfeit Acts in the Statute Law Miscellaneous Bill currently before Parliament is passed. Earlier this year, a proposed draft law on the protection of traditional knowledge and traditional cultural expressions was validated.

This year saw the enactment of the Science, Technology and Innovation Act, Consumer Protection Act, Media Council of Kenya Act and Kenya Information and Communication Amendment Act, all of which will affect IP administration and enforcement both directly and indirectly.

For more stories from 2013, check out the IPKenya archive on the right hand side of this page and information from other sites on our twitter feed.

See you all in 2014!

Law Society of Kenya Article Review: “Copyright Protection for Foreign Works in Kenya”

We are pleased to have come across a solitary article on Intellectual Property (IP) in the recent Law Society of Kenya Journal Volume 9(2) of 2013. This article is titled “Copyright Protection for Foreign Works in Kenya” and was authored by Mr. Wilfred Lusi.

From the outset, the article appears to be premised on the problematic assumption that foreign works do not enjoy copyright protection in Kenya. Take for instance the first paragraph which reads: “The discussion herein is limited to exploring the significance of extending appropriate copyright protection to foreign works…”

In addition, the article fails to distinguish which category of copyright works will be examined in the article. Despite this lack of focus, a cursory reading of the article reveals that the main works primarily considered by the author were audio-visual and musical works. There also appears to be no distinction drawn in the article between copyright and related rights in foreign works. This blogger respectfully argues that this last distinction would have proved useful particularly from the perspective of administration of rights and enforcement of rights.

Read the rest of this article here.

Proposed Intellectual Property Law Amendments: Kenya Anti-Counterfeit Act

Parliament of Kenya

In an earlier blogpost here, this blogger discussed proposed amendments to the Copyright Act introduced through the Statute Law (Miscellaneous Amendments) Bill, 2013 published in Kenya Gazette Supplement No. 146 (Bills No. 32). In similar fashion, this Bill also seeks to amend four sections of the Anti-Counterfeit Act, namely sections 2, 6, 16 and 34. A copy of this Bill is available here (See pages 933-936).

Read the rest of this article here.

Kenya among African Countries Set to Ratify Marrakesh Copyright Treaty

On the June 28, 2013, Kenya was among the WIPO member states who signed Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (“the Marrakesh Treaty”). Our principal negotiator at the WIPO Standing Committee on Copyright and Related Rights (SCCR) tweeted the good news here and here.

In the latest edition of the Copyright Newsletter (pictured above), the Board applauds the signing of the Treaty stating:

“Access to published works by visually impaired and persons with print disabilities is important for economic growth and development as the beneficiaries will be able to access published works at the same time with visually able persons. The Copyright Act in Kenya is currently under review and the proposed amendments will include provisions of the Marrakesh Treaty. Once the law has been approved the Government of Kenya will be at the forefront to ratify the treaty.”

The ratification of the Marrakesh Treaty has since been echoed by leading Intellectual Property (IP) commentators such as Cathy Mputhia. In her article titled “Ratify Marrakesh Treaty into law” published in the Business Daily, Mputhia makes a case for the domestication of the Treaty and states, in part:

“What the treaty urges member states to do is to limit the rights of the authors in recognition of the right of the visually impaired persons to access the information.
If ratified in Kenya, this provision will have an impact on authors, the education sector, the publishing sector and will affect several institutions.”

Comment:
For the second year in succession, the Copyright Act will be amended through the Statute Law Miscellaneous Bill which is already before Parliament. In a previous post here, this blogger reviewed the current proposed amendments to the Act which do not include any changes specifically aimed at giving effect to the Marrakesh Treaty.

In order to effectively domesticate the Treaty, Kenya’s proposed amendments to the Act would have to be two-pronged, namely:
1. Inclusion of certain new terms and definitions contained in the Treaty.
2. Review and amendment of the fair dealing provisions under section 26 of the Act.

With respect to the first set of amendments, the Act would have to been amended to include certain new terms and definitions in Article 2 of the Treaty such as: “Accessible format copy”, “Authorised Entity”, “Beneficiary Person” and “works” (in relation to visually impaired persons).

With respect to the second set of amendments, the Act would have to contain an exception/limitation to copyright specifically aimed at allowing access for visually impaired persons. This new provision of the Act would make it possible for the making, importation, sharing of accessible format copies by beneficiary person or Authorised entities or persons acting on their behalf of a beneficiary person including circumventing any technical protection measures that may be in place.

Proposed Intellectual Property Law Amendments: Kenya Copyright Act

Parliament of Kenya

Recently, the Statute Law (Miscellaneous Amendments) Bill, 2013 was published in Kenya Gazette Supplement No. 146 (Bills No. 32). The Bill seeks to amend four sections of the Copyright Act, namely sections 22, 28, 33 and 46. A copy of this Bill is available here (See pages 933-936).

It is recalled that four other sections in the Copyright Act were amended in 2012
in the exact same manner. Please see this blogger’s comments on the 2012 amendments here. What follows are this blogger’s thoughts on the proposed 2013 amendments to the Act

Read the rest of this article here.

New Kenya Intellectual Property Office Expected in 2014

Daily Nation Cover November 19 2013

As discussed previously by this blogger here, the Kenyatta Administration is keen on overhauling the operations of state corporations in Kenya. It was initially reported that the Presidential Taskforce on Parastatal Reforms (PTPRs) was proposing that the three main Intellectual Property agencies that KECOBO, KIPI and ACA be merged to form a single state corporation.

The Taskforce submits that its proposed reforms are benchmarked on reform initiatives conducted in several jurisdictions including South Africa, Australia, New Zealand, Singapore, Malaysia, China, Nigeria and the United Kingdom. From a IP perspective, it is important to note that the Taskforce report recommends the merger of KECOBO, KIPI & ACA to form Kenya Intellectual Property Office (KIPO).

Recently, the Report by PTPRs was released to the public and a copy of this report is available online here.

According to the Report, all entities previously known as State Corporations shall henceforth be known generally as Government Owned Entities (GOEs). These GOEs have been clustered in four (4) broad classifications as follows:

1. State Corporations: These entities shall be incorporated and managed under the Companies Act Chapter 486 and include: a) Commercial State Corporations; and b) Commercial Corporations with strategic functions that are to be defined through the national development planning process

2. State Agencies: These entities include: a) Executive Agencies; b) Independent Regulatory Agencies; c) Research Institutions, Public Universities, Tertiary Education and Training Institutions

3. County Corporations

4. County Agencies

The Taskforce Report recommends that the Government implement a Centralized Ownership and Oversight Model of all GOEs. The shareholding role for commercial entities shall however be exercised directly by the National Treasury through a Holding Company, the Government Investment Corporation (GIC), which the National Treasury shall incorporate under the Companies Act.

The overarching legal framework governing national government owned entities as well as County Corporations and Agencies will be the Government Owned Entities Bill 2013. This Bill, once enacted, will supersede all current legislation governing State Corporations on matters of governance and include all subsidiaries of Government Owned Entities (GOEs). The Bill will also repeal all individual enabling legislations and recognize the unique characteristics of national State Corporations, national State Agencies, County Corporations, and County
Agencies.

From an IP perspective, the report recommends the creation of a new State Agency to be known as the Kenya Intellectual Property Office (KIPO).

The report at page 107 reads as follows:

Copyright Law and Law Reform

In copyright protection and enforcement the government has established Kenya Industrial Property Institute, Kenya Copyright Board and Anti-Counterweight (sic) Agency. These
institutions sit in each others’ Board of Directors. Best practice has shown that the functions undertaken by the three agencies complement each other and are domiciled in one institution in many countries. It is therefore recommended that the Kenya Copyright Board (KECOBO), Kenya Industrial Property Institute (KIPI) and the Anti-Counterfeit Agency (ACA) be merged into a new State Agency to be known as the Kenya Intellectual Property Office (KIPO).”

It can only be assumed that the Taskforce is referring to IP Law, IP protection and enforcement and not only copyright as erroneously stated in the Report.

On page 192 of the Report, KIPO is classified as an Executive Agency under the broad category of State Agency. The Report elaborates that the enabling legislation for KIPO is yet to be drafted. Finally the Report states that KIPO will be a State Agency under the Cabinet Secretary of Industrialisation and Enterprise Development.

Media reports indicate that President Kenyatta has directed that the recommendations in the Report be implemented in three months time. To this end, Kenyatta directed that a government-led Entities Reforms Implementation Committee would be established to facilitate, oversee and monitor implementation of the Report’s recommendations.