Kenya Set to Earn Millions in Individual Fees from WIPO Madrid System

Kenya Madrid Declaration 2014

Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.

Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.

As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.

In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.

While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.

From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.

The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:

Designation of KENYA (in an international application or subsequent designation)

– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)

Where the mark is a collective or certification mark

– as above

Renewal of an international registration containing a designation of KENYA:

– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)

Where the mark is a collective or certification mark

– as above

HHM Oraro Law Firm Merger and Intellectual Property Private Practice in Kenya

Harusi nayo!* Its not every day two big law firms get married.

Harusi nayo!* Its not every day two big law firms get married.

Media reports indicate that a deal has been sealed bringing together two prominent Kenyan law firms, Hamilton Harrison & Mathews (HHM) Advocates and Oraro and Company Advocates. It is reported that the Competition Authority of Kenya has been notified of the merger and the law firms are awaiting the latter’s approval before an official announcement is made.

HHM partner Richard Omwela confirmed the merger and told the media: “Once we get the greenlight, the new firm will be bigger and better, allowing more lawyers to specialise.”
Although details of the merger are sketchy, it is reported that the new firm, which is likely to be known as HHM Oraro will seek to position itself for local and regional mega deals in oil, infrastructure and various aspects of commercial transactions.

One possible area for growth and specialisation is intellectual property (IP) law. In a previous post here, we highlighted the sharp increase in IP-related disputes reported in the media as well as those taken to court. This trend bodes well for IP-savvy lawyers keen on assisting their clients to enforce their various assets as well as those seeking to expand and develop IP jurisprudence in Kenya. However, our recent survey on IP specialisation among Kenyan lawyers (see here) shows that only a paltry 25 lawyers spend a minimum of 60% of their time on IP matters. Therefore, it may argued that the HHM Oraro merger could result in an increase in the number of advocates actively handling specialised areas of IP for both local and foreign clients.

However, let us examine the two firms from in terms of their respective areas of expertise in IP.

Each year, the World Trademark Review 1000 (WTR 1000), an essential guide to the world’s leading trademark professionals recommends 1000 global law firms and attorneys considered to be the leaders in the field and delivering top-quality trademark services.

In Kenya, HHM is currently ranked in WTR 1000 Silver Band. HHM’s WTR 1000 review reads in part:

“This leading full-scope business law firm has long maintained a solid and reliable trademark practice, primarily servicing the needs of its existing – largely multinational – corporate clientele. Trademark registration is a particular forte, though as a top-rated commercial litigation firm, it has also proved to be a proficient performer in IP disputes. Richard Omwela and Kiragu Kimani are the key contacts for intellectual property.”

Oraro is not featured in the WTR 1000 rankings however two of its Associates have worked in WTR-ranked firms namely Cindy Oraro and Jackson Awele, the latter with extensive IP experience from a WTR 1000 Gold Band firm.

As many know, Chambers and Partners is a company which identifies and ranks the most outstanding law firms and lawyers in over 180 jurisdictions throughout the world.


According to Chambers & Partners, HHM is ranked Band 2 in the Corporate and Commercial category law firms in Kenya. In the Corporate/Commercial: Intellectual Property category, Richard Omwela is in Band 3 among Kenya Ranked Lawyers.

HHM’s review reads in part:

“Hamilton Harrison & Mathews is a very high-quality firm and well rounded. It offers a very strong and commercial service


Notable practitioners

Head of the firm’s commercial and conveyancing department, Richard Omwela also has substantial experience of IP matters. Clients greatly admire his “judgement and gravitas.””

Oraro is not ranked among the Corporate and Commercial category of firms.

In the Dispute Resolution category, both HHM and Oraro are highly ranked by Chambers. Both firms occupy two of the three spots of Band 1 ranked firms in Kenya. George Oraro SC (Founding Partner at Oraro) and Kenneth Fraser, SC (Senior Partner at HHM) are widely considered as the most seasoned dispute resolution lawyers in the country and are both ranked in Band 1. Chacha Odera (Managing Partner at Oraro) is ranked in Band 2, George Murugara and Michi Kirimi (both partners at HHM) are ranked in Band 3 alongside Walter Amoko (partner at Oraro). George Oraro SC enjoys singular distinction as he is also ranked in Band 1 in the category of Dispute Resolution: Arbitrators in Kenya.

All in all, it appears that this is a merger of two notable dispute resolution law firms. Therefore, in the context of IP practice, HHM Oraro would definitely be the go-to firm for contentious IP matters. However with a combined workforce of 15 partners and 20 associates, HHM Oraro could also prove to be a force to be reckoned with in non-contentious corporate and commercial IP work.

Proposed Cases for Copyright Collective Management in Kenya: Software and Some Rights Reserved


The collective management of copyright within Africa has emerged as one of the most viable means of bridging the gap between copyright owners and users of copyright works. According to the African Regional Committee of the International Confederation of Societies of Authors and Composers (CISAC), the royalty collections by African collective management organizations (CMOs) totaled over 55 Million Euros, a 25% increase from the year 2012-2013. However the bulk of these royalties relate to the music-related and audio-visual sectors.

In the recent past, there have been suggestions that Kenya should consider encouraging and/or allowing the formation of a CMO that will administer rights on behalf of owners of software and a CMO that will administer the rights of owners whose works are licensed under a “some rights reserved” framework.

This blogpost looks at the current framework for licensing of CMOs in Kenya and the likelihood of registration of these two proposed CMOs. Section 3 of the Copyright Act establishes the Kenya Copyright Board (KECOBO), a state corporation whose mandate is the overall administration and enforcement of copyright and related rights in Kenya. KECOBO is specifically mandated under Section 5(b) of the Act to license and supervise the activities of CMOs as provided for under the Act. Part V of the Act specifically addresses collective administration of copyright. For a body to be licensed as a CMO by KECOBO it must meet all the requirements set out in the Act.

Presently, KECOBO has registered and licensed four CMOs with respect to the administration of rights in musical works, literary works, audio-visual works and sound recordings.

With respect to the proposed CMOs, an important question to be asked is whether the class of rights and category of work in question is already administered through an existing CMO. If so, then KECOBO will not approve another CMO unless it is established that the existing licensed CMO is not functioning “to the satisfaction of its members”.

It is important to note that KECOBO enjoys a discretionary power to “assist in establishing a CMO for any class of copyright owners where it finds it expedient”. This power could be exercised in favour of any proposed CMO.

1. Proposed ‘Society for Giving’ CMO

Alex Gakuru, Creative Commons Regional Coordinator for Africa, makes the proposal for “the formation of Society for Giving CMO to advance the rights and interests of authors and creators whom license their work for sharing. As a mitigation to all other local CMOs that promote private IP interests.”

The challenge for this proposed CMO is that there already exists CMOs that represent authors and creators of musical and literary works, namely MCSK and KOPIKEN respectively. However there are no CMOs administering rights in audio-visual and artistic works.

2. Software CMO:

Isaac Rutenberg, CIPIT Director, in a blogpost over at Afro-IP titled “Why aren’t there CMOs for software?”, makes a compelling case for the collective management of software. According to Rutenberg:

“Computer source code is subject to copyright, so programmers constitute a class of “copyright owners (… )Some software developer companies (particularly those making mobile phone apps) have literally hundreds of independent pieces of software on offer, much like some musicians have vast repertoires of music. Furthermore, cloud computing is already changing the standard model of software distribution, by allowing users to access programs and data stored on remote servers (rather than being stored locally) (….) Perhaps a pizza or chicken restaurant would benefit from having access to thousands of video games sourced from hundreds of developers, all of which is licensed for a set fee from a CMO. Or perhaps individuals could buy a license from a CMO to gain access to thousands of apps for their mobile phone. Or perhaps businesses could buy a license from a CMO and gain access to hundreds of types of business software from different providers.”

While it is conceded that collectivism, generally speaking, may be beneficial to software owners, the collective management system does not seem to be particularly attractive among the industry players. An important prerequisite for the establishment of CMOs in any industry is a concerted push from the copyright owners themselves. The absence of this push from the rights holders is perhaps a clear indication that software owners have no intention or desire to assign their rights to a CMO.

Be it as it may, would it be possible to have two CMOs dealing with literary works namely KOPIKEN for works in the printed form and another CMO for works in the digital form?

Lessons from Kenafric on Intellectual Property Rights and Permissions

BEN 10 Cartoon Network CN Poster

The Business Daily recently reported that Time Warner Inc and Kenafric are in talks to settle their copyright and trade mark infringement dispute out of court. It is reported that both parties recently appeared before the soon-to-retire IP-savvy Justice JB Havelock to request more time to conclude settlement discussions.

As we had previously discussed here, Cartoon Network Africa through its parent company, Time Warner had moved to the High Court to stop local confectionery giant Kenafric from using its cartoon “BEN 10” on the wrappers of its bubble gum products. Time Warner argued that the association of the chewing gum with its brands was damaging to the reputation of BEN 10 and goods branded with the label including toys, video games and clothing valued at Sh275 billion therefore Kenafric’s use of the name BEN 10 amounts to trade mark infringement of BEN 10 Trademarks. In addition, the sworn affidavit by Cartoon Network’s Vice President Louise Sams claimed that the unauthorised reproduction or adaptation or publication or broadcast or sale or distribution or possession or importation of the offending chewing gum by Kenafric constituted copyright infringement.


In its defence, Kenafric argued that the Cartoon Network products in question are registered under different classes under the Nice Classification hence Time Warner cannot challenge Kenafric given that the latter deal in different products. Kenafric also argued that the US firm has no local operations that can make consumers links its products with those of Kenafric, which are mostly sold within East Africa. All in all, Kenafric contended that the line of trade of the two companies is distinct and there are no similarities between their goods that can confuse customers.

In the meantime, many intellectual property (IP) commentators agree that Kenafric runs the risk of being dragged to court in similar fashion by the Coca Cola Company for its wrappers which appear to infringe on the “FANTA” and “SPRITE” marks. These infringing get-ups are available below:



Be it as it may, this blogger argues that Kenafric’s public experience with intellectual property enforcement should serve as a lesson to other commercial entities on how not to use the IP of other entities.

From a copyright perspective, literary and artistic works that make up a trader’s brand image cannot usually be used without that owner’s permission. Of course, the copyright owner may refuse to give permission for use of their work. In the case of Kenafric’s operations, it is clear that its uses would not fall within the scope of the fair dealing provisions and would not be subject to compulsory licensing through the Competent Authority. Therefore Kenafric would have to seek and obtain permission in writing to use, reproduce or adapt any trader’s copyright works.

Therefore, Kenafric would have to negotiate a licence to cover the use it intends to make of the work. This licence is essentially a contract between Kenafric and the copyright owner including the terms and conditions of use and payment or royalty for the use. The Copyright Act distinguishes between exclusive and non-exclusive licenses however the license must be in writing.

From a trade marks perspective, if Kenafric wants to use other people’s trade marks, it must obtain permission. Trademarks may be registered or unregistered. The registration of a mark gives the proprietor of that mark the exclusive right to the use of the trademark upon or in relation to the goods in respect of which it is registered, or in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services. It follows that the proprietor of the mark may sue for infringement where there has been an unauthorised use of the registered mark. In addition, the registered owner of a trademark also retains the right to protect any reputation acquired through use by means of a passing-off action.

Therefore if Kenafric wants to use a trade mark, it must approach the owner and enter into a licence agreement with them. As one of the largest confectionary companies in the East African region, this blogger is of the view that Kenafric has sufficient bargaining power to negotiate favourable licensing terms and conditions with respect to both trade mark and copyright uses. As witnessed previously in the Mandela Foundation case against Zuji Travel Agency, globalization has made it easy for IP owners to detect IP infringement all over the globe, therefore the onus is on IP users to take all reasonable precautions to ensure that they obtain the necessary permissions and licenses from the IP owners.

In the case of most commercial entities such as Kenafric, formalized licensing arrangements provide a desirable win-win outcome for all parties involved as opposed to costly and lengthy court cases. What remains to be seen is whether Kenafric and other local companies will learn from the Ben 10 case.

Did Hong Kong Travel Agency Zuji Infringe Mandela’s Intellectual Property Rights?

South China Morning Post Mandela Advert

Earlier this month, Yahoo! News reported that the South African consulate in Hong Kong wrote to a local travel company “Zuji” and demanded that it “immediately pulls a front-page advertisement featuring an image of a fist-pumping Nelson Mandela above the word “freedom””. The advert in question is pictured above.

According to the South Africans, the use of the stylized image — which also echoes the Barack Obama “Hope” poster — was an infringement of copyright held by the Nelson Mandela Foundation. A close-up of the advert is pictured below:

zuji advert mandela

Read the full article here.

Intellectual Property in Crafts and Visual Arts in Kenya

Craft Afrika Jumpstart Thursday June 2014

This month, CraftAfrika organized a forum for creators and entrepreneurs in the crafts and visual arts sectors to discuss the impact and importance of the intellectual property (IP) system. This blogpost is a review of some of the key IP issues that arose during this important forum.

In today’s digital era, the real challenge for artisans and visual artists is not just to produce and market winning new products that cater to changing consumer tastes, but also to prevent – or if unable to prevent then to effectively deal with – unfair competition or theft of their creative ideas. The intellectual property (IP) system is the best available tool for creating and maintaining exclusivity over creative and innovative output in the marketplace, albeit for a specified maximum period of time. The effective use of IP can also help artisans and visual artists to develop networks and relationships not only with end consumers, but also with all the links in the supply and demand networks.

Overview of IP

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property is divided into two categories: 1) industrial property, which includes patents, trademarks, industrial designs and utility models; and 2) copyright, which includes musical works, literary works such as novels, poems and plays, films, musical compositions; artistic works, such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programmes.

Different Types of IP Protection for Crafts and Visual Arts

kecobo and kipi fees 2013

Before a person or enterprise can take advantage of its intellectual output it has to acquire IP rights (IPRs). IPRs in the fields of industrial property need to be registered in order to be protected. In the case of copyright, registration is voluntary since IPRs under copyright subsist automatically once the work is fixed in material form. Here are the different types of IP protection for Crafts and Visual Arts, in order of priority:

1.Trademark: A brand or trademark is a sign or any combination of signs, capable of distinguishing a product or service from other products or services on the market. The main task of a trademark is to individuate a product or a service – consumers are able to distinguish between different goods with different marks precisely on the basis of the marks. Unlike other types of IP, the term of protection for trademarks is not limited; they can be renewed indefinitely by the owner.
Example: SANDSTORM is a registered trademark used for hand-crafted leather items such as bags. It is registered together with a lizard symbol.

2.Copyright: Basically, copyright gives the owner the exclusive right to use the work. It protects items such as paintings, drawings, sculptures, photographs, architecture, instruction manuals, software, databases, technical documentation, advertisements, maps, literary works, music, films or songs. In most countries, a copyrighted work is protected for the length of the author’s life plus a minimum of another 50 years.

3.Industrial Design: An industrial design (or simply a design) is the appearance of the whole or part of a product resulting from features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Industrial designs, as objects of IP, can usually be protected for up to a maximum of 15 years. The fees indicated in the table above for design registration are the total fees payable to KIPI and not merely the filing fees.

Example: A new textile pattern or the unique shape of a piece of jewellery can be protected as designs.

4.Patent: A patent is an exclusive right granted for an invention, which is a product or a process that provides a new and non-obvious way of doing something, or offers a new and non-obvious technical solution to a problem. A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.

Example: A new method of tatting, using a shuttle, that enables the tatter to use more than two colours or textures of thread has been patented.

5. Utility Model (‘Petty Patent’): A utility model is similar to a patent, but the requirements for acquiring protection are less stringent and the protection is much cheaper to obtain and to maintain. On the other hand, the term of protection offered by a utility model is shorter than a patent i.e. 10 years without the possibility of renewal. The fees indicated in the table above for utility models are the total fees payable to KIPI and not merely the filing fees.

6.Trade secrets: this is confidential business information of any nature that can be used in the operation of a business and that is sufficiently valuable and secret to afford economic advantage over others. To be protected, the owner of a trade secret must have taken reasonable steps to keep the information secret. Therefore it is advised that artisans and visual artists use Non-Disclosure, Non-Compete and Confidentiality agreements and/or clauses in all their dealings with third parties.

Examples: Glass-blowing techniques, oven processing methods for baking pottery, clay mixture preparations for ceramics, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes can all be trade secrets.

Commercialising Intellectual Property Rights

IPRs represent property rights. They can be used by the IPR owner or they can be transferred to others. Artisans and visual artists who own any IPRs can sell their rights to another person. More importantly, IPRs have the particular advantage that they may be exploited simultaneously by several people. This can be done through licensing.

The word licence simply means permission – a person grants permission to another to do something. A licence agreement is a contractual agreement under which a licensor (the person who owns the IP) permits another (licensee) to use the right. It does not transfer the ownership of the IP.

Enforcing Intellectual Property Rights

The main reason for acquiring IP protection is to be able to reap the benefits of the creations. IP assets can only lead to benefits when the acquired IPRs can be enforced; otherwise, infringers and counterfeiters will always take advantage of the absence of effective enforcement mechanisms to benefit from the artisan’s or visual artist’s hard work. It is often the threat of enforcement or the actual enforcement action which allows an IPR to be effectively exploited as a commercial asset.

In the recent dispute between Penny Galore and Amani Women’s Group, Amani was accused of infringing Penny Galore’s rights under both copyright and trade mark law with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. Penny Galore alleged that Amani had substantially copied and/or reproduced the Kura Necklace Grey and that Amani were selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demanded that Amani immediately stop all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed.

In the case of Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. It was found that Safaricom had used artwork belonging to Alternative Media on its 250 Shillings Scratch Cards without Alternative Media’s authority. Therefore the court found that infringement of copyright arose not because the Safaricom’s work resembled Alternative Media’s, but because the Safaricom had copied all or a substantial part of Alternative Media’s work.

The Intellectual Property End-Game

For artisans, craft entrepreneurs and visual artists in Kenya, the IP system should be viewed as a protection and promotion tool that, if used effectively, can enhance business success.

Some important IP considerations include: identification of creative output that may be protected with IP rights, understanding the types of IP rights and protective measures best suited for particular needs and business, consideration of the costs and benefits of IP registrations, maintenance and management of IP assets, detection of IP infringements and enforcement of IP rights.

QOTD: Jurisdiction in Patent Infringement Litigation: Industrial Property Tribunal or High Court?


In today’s Question of the Day (QOTD), a reader asks:

“In cases of infringement, I believe that a patent owner can elect to sue in the High Court, and then the court can either take the case or send it to the Industrial Property Tribunal. The patent owner can also elect to take the case directly to the Tribunal and skip the court altogether. Is this understanding correct?”

The Industrial Tribunal is the “court” of first instance. If a party is not satisfied with the decision of the Tribunal, it can proceed on appeal to the High Court. However in practice, some litigants proceed directly to court and if the opposing side raises an objection, some judges refer the matter back to the Tribunal. In some instances, depending on how the matter is presented by the counsel, some High Court judges decide to hear the matter.

In terms of a choice between High Court or Industrial Property Tribunal, the Industrial Property Act, 2001 clearly states that proceedings should start at the Tribunal. In this regard, consider the following sections of the Act:

105. Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”

106. On the request of the owner of the patent or the registered utility model or
industrial design, the Tribunal shall grant the following relief—
(a) an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
(b) damages; or
(c) any other remedy provided for in law.”

112. Where under this Act provision is made for appeals from the decisions of the Managing Director, all such appeals shall be made to the Industrial Property Tribunal…”

113.(1) For the purposes of hearing and determining appeals in accordance with section 112 and of exercising the other powers conferred on it by this Act, there is established an Industrial Property Tribunal which shall consist of the chairman and four members appointed by the Minister.”

In those cases where a judge decides to hear the matter at first instance, this decision is open to review and/or appeal either a misinterpretation of the Industrial Property Act or a decision made per incuriam depending on how the matter is presented to the court. In a High Court case reported here, the defendant raised a preliminary objection citing section 112 but not 113. However, in this case, the judge ruled in favour of the plaintiff and allowed the objection without considering section 113 of the Act as reproduced above. It appears that the courts tend to view such objections as encroaching on the unlimited jurisdiction of the High Court.

However, the intention of the legislature seems to be that the Industrial Property Tribunal would act as a specialised court that would take advantage of its expertise and experience to deliver speedy and sound rulings. The Tribunal has a full time Secretary employed by the KIPI as legal officer to carry out legal research and provide reports to assist the members of the Tribunal.

In the context of trade mark litigation, the Industrial Property Tribunal would be akin to the Registrar of Trade Marks who hears and determines opposition/expungement matters. In this regard, it is important to note that most of the trade marks rulings delivered by the Registrar are seldom challenged on appeal in the High Court. Even where trade mark matters are appealed to the High Court, very few of these matters are set aside by the court.

High Court Stops Zuku, PANG and StarTimes from Infringing KBC World Cup 2014 Exclusive Media Rights

Media reports (here, here, here and here) indicate that the Kenya Broadcasting Corporation (KBC) has moved to the High Court under Certificate of Urgency seeking interim injunctive orders against Pay TV companies Wananchi Group, Pan African Network Group (PANG) and StarTimes Media. It is reported that Ogola J sitting in the High Court made the following ruling:

“Pending the hearing and determination of this suit, an injunction is issued restraining the respondents (Wananchi, PANG and StarTimes) from infringing by way of advertising, broadcasting or promoting the tournament the rights of KBC”

From the outset, it is important to state that the rights in question are FIFA Media Rights conferred exclusively to KBC for the territory of Kenya (See our previous analysis here). In this regard, KBC alleges that its exclusive rights were infringed through hacking of its signals and broadcasting of the World Cup opening match along with the adverts paid for to be aired during the match. In this regard, KBC claimed that these companies used the popularity of the World Cup to attract advertisers and make sales of their decoders.
In the case of StarTimes, it is alleged that even after KBC blocked StarTimes from its digital platform, StarTimes used the analogue signal to re-broadcast live matches of KBC to its Kenyan viewers and those in Uganda and Tanzania.

Read the full article here.

Watching World Cup 2014 in Kenya: FIFA’s Media and Public Viewing Rights

Tonight the Brazil 2014™ FIFA World Cup™ (WC) kicks off in the South American nation of Brazil! As previously discussed here, FIFA has developed and protected an assortment of logos, words, titles, symbols and other trade marks to be used in relation to the 2014 FIFA World Cup™ (the Official Marks). In order to attract funding to stage such a large event, FIFA offers its partners, sponsors and supporters the exclusive rights to use of the Official Marks for promotional and advertising purposes.

In this post, we shall consider FIFA’s intellectual property (IP) rights in the broadcasts and public view of the WC. It is clear that all copyright and other (IP) rights subsisting in, and all goodwill associated with, broadcast coverage of the WC are exclusively owned by FIFA and protected by domestic and international law. In this regard, FIFA distinguishes between broadcasters who are defined as Media Rights Licensees and exhibitors who stage Public Viewing Events in relation to any matches of the 2014 FIFA World Cup Brazil™.

Read the full article here.

#ipkenya Weekly Review (25th May – 1st June, 2014)

RIP Maya...

RIP Maya…

Since our last weekly review here, we have published three new articles, namely the revoked ARIPO patent no. 773 granted to Sanitam, FIFA’s trade mark rights on the eve of the World Cup and Safepak’s track record with industrial design protection. As always, your comments and questions are more than welcome!

Here are some of the other IP developments from the past week:

– Data-mining Kenyan Patents [AfroIP]

– South Africa: Owning IP rights ‘can help save fees’ [BD Live]

– Nigeria: So, some guy went and trademarked “Nollywood”…by Rotimi Fawole | TextTheLaw [NIPLaw]

– South Africa: Copyright in an academic library context: Part 1 [openUCT]

– Angola: Parliament Passes Law On Copyright and Related Rights [AngolaPress]

– Nigeria: COSON and Nigerian Broadcasters Sign Landmark Agreement [IPeye]

– South Africa: Fast-tracking OER policy and practice in South Africa – UNISA on the move [ipunit]

And finally, we invite our readers to consider the intellectual property (IP) issues involved in the following product available in Kenya: