Reminder: CIPIT – KIPI Training Course on Patent Drafting and Prosecution, 18th – 21st August 2014

“The strength of a patent depends on a properly prepared patent specification that meets the requirements prescribed in the Industrial Property Act 2001 and the industrial Property Regulations 2002. In addition, there are generally accepted practices that have developed over the many years of patent practice, which serve to guide preparation and prosecution of patent applications.”

There will be a training course, Patent Drafting and Prosecution, to be held on 18th – 21st August 2014 at Strathmore University. For learned friends who attend and complete this course, they will receive 2 CLE points. The course prospectus is available here and the course programme is available here.

For those who attended this course in 2013 (see here), and wish to further refine your patent drafting skills, please note that the 2014 version of the course will focus heavily on patent drafting for ICT-based inventions. The trainers of this year’s training course will also work with repeat attendees to customize your training.

The fee per participant is Ksh 50,000 which is inclusive of course materials, lunches and teas. Participants who register and pay the fee early will enjoy a special rate of Ksh. 45,000.

For more information contact: cipit@strathmore.edu

Kenya Leads Africa in Celebrations of World Intellectual Property Day 2014

Winning team from Riara University at Inaugural IP Moot receive Trophy from The Hon. Willy Mutunga, Chief Justice of the Republic of Kenya.

Winning team from Riara University at Inaugural IP Moot receive Trophy from The Hon. Willy Mutunga, Chief Justice of the Republic of Kenya.

In case you missed it, Kenya’s planned activities for this year’s World Intellectual Property Day went off without a single hitch and exceeded all expectations. This year’s celebrations were the envy of the twitterverse judging from the volume of tweets with the hashtag #worldipdayke (click to view the live-tweets).

The highlight of the day’s event’s was undoubtedly the inaugural IP moot which was won by the impressive all-female team from Riara University. The IP Moot trophy was presented by none other than the Chief Justice and Head of the Judiciary, Dr. Willy Mutunga, SC (see picture above).

Surprisingly, the IP Moot topic was closely related to the World IP Day theme despite being prepared almost 5 months before WIPO announced this year’s theme. The topics are available here. The inaugural Moot attracted a total of eight (8) teams drawn from the various public and private universities throughout Kenya. However the success of the moot was due to an unparalleled cooperation between the government, the legal profession and of course academia, led by Strathmore Law School. At the governmental level, the Executive and Judicial branches of government played an instrumental role in offering practical guidance to the mooters. The Executive was represented by KECOBO and KIPI, whose senior management served as moot court judges. The judiciary’s role in the moot was indispensable and indeed the mooters benefited from the knowledge and experience of Court of Appeal Judge G. Kairu and High Court Judge J. Kamau.

The legal profession also came out in support of the IP moot led by three law firms namely, Coulson Harney, Kaplan & Stratton and Simba & Simba, Advocates. Each firm was represented by their IP-savvy advocates who served as judges in the moot.

The following pictures taken during the various rounds of the moot say it all:-

Mooter (standing) addresses moot court judges including KECOBO Legal Counsel Edward Sigei during preliminary rounds of the Moot.

Mooter (standing) addresses moot court judges including KECOBO Legal Counsel Edward Sigei during preliminary rounds of the Moot.

The Moot Judges in the Final Round: L-R Kairu, JA; Kamau, J; Caroline Muchiri, Simba & Simba Advocates; Sudi Wandabusi, KIPI; John Syekei, Coulson Harney & Dr. Mutai, KIPI.

The Moot Judges in the Final Round: L-R Kairu, JA; Kamau, J; Caroline Muchiri, Simba & Simba Advocates; Sudi Wandabusi, KIPI; John Syekei, Coulson Harney & Dr. Mutai, KIPI.

As the moot rounds were underway, two separate events were taking place namely the “IP Pavillion” (exhibition stands) and a discussion forum on IP and Film. The day ended with a public screening of the award-winning movie “The Prestige” (2006) courtesy of the United States (US) Embassy in Nairobi. Here are some of the pictures from these events:

Liz Lenjo leads the discussions on Intellectual Property Rights in Film.

Liz Lenjo leads the discussions on Intellectual Property Rights in Film.

Peter Hime, an IP Lawyer at the ACA stand.

Peter Hime, an IP Lawyer at the ACA stand.

Discussion Panel on Film Industry in Kenya (L-R): Gerry Gitonga, Entertainment Lawyer; Krushil, Owner of MoMoviez; Gerald Langiri, Founder of Actors.co.ke; June Gachui, Actress, Singer & Lawyer; Timothy Owase, Kenya Film Commission and Mwaniki, Riverwood Ensemble.

Discussion Panel on Film Industry in Kenya (L-R): Gerry Gitonga, Entertainment Lawyer; Krushil, Owner of MoMoviez; Gerald Langiri, Founder of Actors.co.ke; June Gachui, Actress, Singer & Lawyer; Timothy Owase, Kenya Film Commission and Mwaniki, Riverwood Ensemble.

Although it was a Saturday, members of the public came out and interacted on issues affected the film industry and the role of IP in the context of film.

The day was also significant for KIPI Managing Director and Registrar of Trade Marks, Dr. Kibet Mutai who announced that his term was set to expire at the end of April 2014. Many will recall that Dr. Mutai took over from Prof. Otieno-Odek at KIPI in April 2011. Therefore this day was Dr. Mutai was his last public function and he took opportunity to award several awards for the highest number of trade mark applications.

A smiling Dr. Kibet Mutai gives away prizes at the World IP Day 2014. This is his final public event as KIPI Managing Director.

A smiling Dr. Kibet Mutai gives away prizes at the World IP Day 2014. This is his final public event as KIPI Managing Director.

While the IP Moot, IP Pavillion and IP Forum were taking place at Strathmore, there was a separate event taking place in the Nairobi central business district. The Performers Rights Society of Kenya (PRiSK) had organised a procession walk from Kenya National Theatre to Nairobi County Hall. The procession finally gathered at Uhuru Park where members of the public got to interact and discuss the day’s theme. As many may know, PRiSK is the collective management organisation that represents the related rights of performers including actors.

poster by PRiSK

The theme of this year’s World IP Day was also the subject of the following WIPO interviews with two personalities in Kenya’s film industry:

Overall, this blogger is very pleased with the amazing team effort displayed by a whole cast of different stakeholders in Kenya’s creative industries, from government to private sector and academia. The result was a magnificent day marking World IP Day in Kenya. A quick online search reveals that only Algeria, Mozambique, Namibia, Rwanda, South Africa and Uganda had any online evidence of planned World IP Day activities, which is worrying given the low levels of IP awareness on the continent. Therefore it is clear that Kenya has set the bar very high for Africa!

This blogger hopes that Kenya will continue being active in its World IP Day outreach activities and events in the years to come.

Intellectual Property and Tax Law: Bata Shoe Company Kenya v. Kenya Revenue Authority

Picture1 Bata Kenya Blog

Recently, the High Court delivered an interesting judgment regarding the chargeability of intellectual property (IP) royalties and license fees for purposes of customs duty valuation. In the case of Republic v Kenya Revenue Authority Exparte Bata Shoe Company (Kenya) Limited [2014] eKLR the Kenya Revenue Authority (KRA) issued a partial demand notice to Bata Kenya requiring the latter to make a total payment of KES 90,489,947.00 to The Commissioner of Customs Services within 30 (thirty) days from November 24, 2010. Despite several exchanges, KRA and Bata Kenya were unable to agree on the total amount of taxes owed by the latter. Bata Kenya then moved to court under judicial review proceedings seeking for KRA’s notice to be quashed on the grounds that distribution royalties are not subject to customs duty as they are not royalties related to the goods being valued that the buyer must pay, either directly or indirectly, as a condition of the sale of the goods being valued within the meaning of Rule 9(i)(c) of the Fourth Schedule to the East African Community Customs Management Act, 2004 (EACCMA).

Bata Kenya owes its entire existence to two separate agreements namely, a Trade Mark License Agreement (TLA) with Bata Brands and an Agreement on commission/service charge with China Footwear Services Limited (CFS) and Bata Shoe (Singapore) Pte Ltd (BSS). An overview of the TLA entered on 1st January, 2006 between Bata Brands (as the licensor) and Bata Kenya (as the licensee) states that the latter is allowed to use the ‘BATA’ trademark for all its business activities in Kenya (known as the Territory). In return, Bata Kenya is required to pay 2% of the total annual sales “after all withholding and other taxes, levies or dues of all kinds imposed by any authority in the Territory”.
In clause 10 of the agreement, one of the conditions for early termination of the TLA is non-payment of the royalty. As per clause 11 the effect of termination would mean that Bata Kenya would cease trading in products with the trademark ‘BATA’.

Read the full article here.

Digital Migration Case: Flawed Reasoning by Court of Appeal on Intellectual Property Issues

Signet Kenya Limited, Star Times Media Limited, Pan Africa Network Group Kenya Limited and GOTV Kenya Limited are hereby prohibited from broadcasting any content from Royal Media Services Limited, Nation Media Group Limited and Standard Group Limited without their consent, pending the hearing and determination of the intended appeal. – Ojwang & Wanjala, SCJJ in Communications Commission of Kenya v Royal Media Services Limited & 10 others [2014] eKLR.

There’s an interesting saying about intellectual property (IP) adjudication in Kenya which states that: “most of the time, the outcome may be right but the reasoning is often wrong.” The recent decision by a three-judge bench of the Court of Appeal in the case of Royal Media Services Limited & 2 others v Attorney General & 8 others [2014] eKLR (digital migration case) is a clear illustration of the above saying. Although the matter is currently on appeal before the Supreme Court, this blogpost intends to analyse the reasoning of the Court of Appeal’s majority and minoirty judgments in this matter.

Two out of the three appellate judges (Nambuye and Maraga JJA) set aside the judgment of Majanja, J in the High Court (discussed by this blogger here) and made two IP-related findings in their separate but concurring judgments, namely:-

1. THAT the learned Judge erred in law in holding the Appellants’ intellectual property rights were not violated by the Respondents in broadcasting the Appellants’ programs and content without their consent.

2. THAT the learned Judge erred in law in holding that infringement of intellectual property rights could not be the subject of a constitutional Petition.

It is this blogger’s considered opinion that the above majority view of the Court of Appeal is fundamentally flawed as the Court of Appeal (curiously) arrives at two determinations on IP issues without any reference to any IP legislation.

For instance, the learned appellate judge Nambuye JA at paragraph 91 states that: “I do appreciate that the content both developed and acquired from 3rd parties fits the definition of intellectual property”. To support her position, the judge cites the definition of “property” under the Interpretation and General Provisions Act Cap 2 Laws of Kenya and Article 260 of the Constitution of Kenya.

It is trite that neither Cap 2 nor the Constitution contain a definition of “intellectual property”. The definition of intellectual property depends on the specific subject-matter and the correlated rights which are contained in various pieces of legislation.

In similar fashion, Maraga JA at paragraph 64 states that: “to allow any broadcaster to air FTA programmes of others without their consent amounts to infringement on the IPRs of the owners of those programmes.” However the learned appellate judge does not define and explain which specific intellectual property subject matter and/or specific right(s) in that subject-matter have been violated. In addition, Maraga JA does not set out any accepted test under intellectual property law for infringement.

Despite the Court of Appeal’s flawed reasoning as illustrated above, the outcome of the case is right on the issue of IP infringement. From an intellectual property perspective, all broadcasts are recognised as a category of copyright works under section 22(1). Therefore broadcasters are recognised as holders of neighbouring/related rights under copyright law, like producers and performers. Broadcasters have the right to authorize or prohibit the following acts as defined in the Copyright Act:
(a) Rebroadcasting of their broadcasts
(b) Fixation of their broadcasts;
(c) Reproduction of such fixations;
(d) Communication to the public of their television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee

Section 35(1) provides that if any of the above acts are done by any person without the authority of the broadcaster, the latter’s rights under copyright are infringed. Subsection 4 of this section provides that infringement is actionable at the suit of the rights holder (assignee or exclusive licensee as the case may be) and the latter may be entitled to a wide array of reliefs including damages, injunction, accounts, delivery up, reasonable royalty, among others.
For this reason alone, this blogger agrees with Majanja J’s reasoning in the High Court that IP infringement claims cannot be the subject of a constitutional petition.

This blogger will continue to keenly monitor and update readers on the developments in this matter as it is heard by the Supreme Court.

Television Wars and Intellectual Property Protection: CFC Stanbic Magnate Show and Samantha’s Bridal Show

Kenya has had two High Court rulings in two separate cases in the space of two weeks, both dealing with copyright infringement in television shows. In this blogpost, these rulings will be analysed bearing in mind that both these cases are still on-going.

In the case of Oracle Productions Limited v Decapture Limited & 3 others [2014] eKLR (the Magnate case), Oracle claimed Decapture and others have infringed the latter’s copyright in its reality game show. Oracle is the copyright owner of a literary work describing a reality game show styled “Young Entrepreneurs” and registered with the Kenya Copyright Board as KCB 0831. Decapture is the copyright owner of a literary work describing a reality game show titled “The CFC Stanbic Bank Magnate” (the Magnate show) and registered with the Kenya Copyright Board.

Read the full article here.

Judicial Review and Intellectual Property Administration: Sony Holdings Ltd v. Sony Corporation

sony holdings trade mark device word kenya KIPI

We think it is arguable whether, under rule 102 of the Trademarks Rules, the Registrar has unfettered discretion to extend time. – Court of Appeal at Nairobi.

The case of the Republic Ex-Parte Sony Holdings Limited v Registrar of Trade Marks & another [2014] eKLR (the “Sony case”) becomes one of a handful of intellectual property (IP) related cases to find its way to the Court of Appeal. It is an important case as it invites the judicial arm of government to determine whether executive arm of government, through the Registrar of Trade Marks has acted outside the law in exercising its statutory functions.

The Sony case arose way back in 2009 when Sony Holdings applied for the registration of two trademarks (a word mark, and a word device). Sony Holdings submitted the proposed trademarks for registration by way of two letters dated 18th May 2009. The Registrar of Trademarks wrote back to Sony Holdings on 8th September 2009, giving notice of refusal to register the trademarks. The Advocate’s wrote back to the Respondent asking that he reconsider his refusal. The Respondent then gave approvals for the marks to be advertised in the Industrial Property Journal. The advertisement was done on 31st May 2011 as appears above and below.

sony holdings trade mark word kenya KIPI

However, on 26th January 2012, the Registrar of Trade Marks wrote to Sony Holdings, informing the latter that an extension of time had been granted to Sony Corporation to lodge a notice of opposition. Sony Holdings wrote back to the Registrar of Trade Marks on 29th February 2012 indicating its objection to the extension of time. The Registrar did not respond to the content of this last letter and instead wrote to Sony Holdings informing it that a notice of opposition had been filed on behalf of Sony Corporation, and asked Sony Holdings to file a counter statement within 42 days.

Therefore Sony Holdings’ case before the High Court was that the Registrar’s exercise of discretion in extending time to file the notice of opposition was illegal, irregular and wrongful. Warsame J. sitting in the High Court dismissed Sony Holdings’ application and held that the Registrar had not exceeded its statutory authority in extending the time for filing the notice of opposition. In this judgment, the learned judge makes two important points relating to judicial review in intellectual property administration. First and foremost, the High Court dismisses the internal exhaustion rule in administrative law which would require that an aggrieved party exhausts all avenues of recourse available under the enabling statute before approaching the courts for a review. In the present case, the court disagreed and stated that:

I am of the view that the present application is properly before the court because the Applicant [Sony Holdings] has alleged that the Respondent [the Registrar] acted in excess of his jurisdiction. An action taken in excess of jurisdiction can only be quashed by way of judicial review orders.

The second important point made by the High Court relates to the principle of legitimate expectation. This principle states that if a public body leads a person to expect that the public body will, continue to act in a way then the latter should not, without an overriding reason in the public interest, resile from that representation and unilaterally cancel the expectation of the person that the state of affairs will continue. In other words, for a legitimate expectation to arise, there must be a promise or representation that arises from the public body, that would be reasonably expected to continue. In the present case, the court explained why Sony Holdings could not rely on the principle of legitimate expectations as follows:

The fact that the trademarks had been advertised did not necessarily mean that the trademarks would as of right be registered. In fact, there was no representation to the Applicant that these marks would definitely be registered once the advertisement in the journal had been done.

Recently the Court of Appeal heard and determined an application by Sony Holdings for an order that pending the hearing and determination of the it’s appeal from the judgment of the High Court that there be a stay of opposition proceedings pending before the Registrar of Trademarks or any action under the Trademarks Act by the Registrar.
Sony Holdings argued that the substance of the appeal is the legality of the opposition proceedings before the Registrar and if the proceedings continue to conclusion then the substance of the appeal would be lost. Sony Corporation in reply argued that Sony Holdings would have a right of appeal or review to the High Court on the merits of the opposition proceedings and for that reason there would be no prejudice to Sony Holdings should the opposition proceedings before the Registrar of Trade Marks proceed to conclusion.

The Court of Appeal rejected Sony Holdings’ application for stay stating that any party dissatisfied with the decision of the Registrar would have recourse to the Courts.

Meanwhile, the root cause of this dispute remains the wide discretion given to the Registrar under Rule 102 in matters of extension of time. How does one establish whether such discretion has been exercised unreasonably, in bad faith or in disregard to the law?

This blogger will be keenly following the developments around this case both before the Registrar and the Court of Appeal.

The Jubilee Government – One Year Later: Waiting for the Intellectual Property Organisation of Kenya

gado editorial cartoon April 10 2014 daily nation

As many readers may know, the Jubilee government of President Uhuru Kenyatta, his Deputy William Ruto and his Cabinet mark the end of their first year in office this month. To this end, Gado’s comic in today’s Daily Nation newspaper depicts Kenyatta and Ruto being accused of copyright infringement by the immediate former president Kibaki. The message is clear: the Jubilee government is literally singing the same tune as the previous government.

As this blogger has previously noted, 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 lasting mark on IP in the past 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. (See this blogger’s comments on the merger here and here).

According to recent media reports, the heads of the various government parastatals spent the month of March at the Kenya School of Government deliberating and making recommendations to the Jubilee Government on the best ways to merge the various state agencies across the various sectors, including intellectual property administration and enforcement. Unconfirmed whispers received by this blogger indicate that the proposed name for the new IP body is the Intellectual Property Organisation of Kenya (IPOK) which will be composed of three directorates (Copyright and Related Rights, Industrial Property and Anti-Counterfeit). This new body, IPOK, will be run by a Director-General, much like the African Regional Intellectual Property Organisation (ARIPO) or the World Intellectual Property Organisation (WIPO).

Regardless of the new IP body’s format, it is clear that members of the Jubilee Cabinet will play a crucial role to ensure that this body functions smoothly and delivers on the expectations of Kenyans. In particular, the Cabinet Secretaries in charge of Industrialisation, Justice and Culture will play the greatest role to midwife and steer the operationalisation of the proposed IP body. In a recent publication titled “Cabinet Scorecard”, the Star newspaper used the following rating to gauge the performance of the Jubilee Cabinet over the past year:

“A. You are doing an excellent job

B. Good, but room for improvement

C. You are okay

D. Get your act together

E. Resign

F. Please fire him, Mr President”

According to the Star, no member of the Executive obtained an “A” grade with Kenyatta being the highest scorer with a “B” grade. The Cabinet Secretary for Industrialisation, Adan Mohammed was among the lowest scorers with a “D” grade.

The scorecard reads in part:

“A year later, no one can say with certainty whether he [Mohammed] has done anything let alone inspire change. Nothing much has been heard of his ministry and nothing has reverberated on the ground from the golden touch everyone expected from him…It is no surprising therefore that in the ministry’s website, only three events appear in the “news and events” category one year later.”

Many will recall that Mohammed’s docket is the parent ministry for two out of the three IP agencies to be merged, namely the Kenya Industrial Property Institute (KIPI) and the Anti-Counterfeit Agency (ACA). Furthermore, it is widely speculated that the Industrialisation Ministry may be charged with direct oversight and supervision over the new IP body.

As the Jubilee government enters the second year of its administration, this blogger will continue to review the highs and lows of the Executive, including the current national IP offices, in promoting, supporting and protection the IP rights of the Kenyans.