Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya

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At first glance, most observers would contend that Kaplan & Stratton (K&S) Advocates has established itself as the premier IP law firm in Kenya. This may seem like quite a remarkable feat but as most IP enthusiasts already know, K&S is one of the oldest (1927) and most established (16 partners) law firms in the country with one of its partners possessing over 40 years experience in IP practice. So, by all means, K&S is a giant however this blogger submits that this giant is slowly fading in comparison to the numerous new and not-so-new law firms in Kenya that are actively engaged in substantial IP related work.

This blogpost aims to consider the performance of eleven Kenyan law firms known to have established IP practices, namely Kaplan & Stratton Advocates (K & S), Hamilton Harrison and Mathews Oraro Advocates (HHM Oraro), Iseme Kamau & Maema Advocates (IKM), Ndungu Njoroge & Kwach Advocates (NNK), Coulson Harney Advocates (CH), Daly & Figgis Advocates (D&F), Gichachi & Company Advocates (G & C), Simba & Simba Advocates (SS), J.K Muchae & Company Advocates (JKM), CFL Advocates (CFL) and Muriu Mungai & Company Advocates (MMC).

In considering the performance of IP firms in Kenya, this blogger considered relevant information from several sources including, the Law Society of Kenya (LSK), the Kenya Industrial Property Institute (KIPI) and the Kenya Law Reports (eKLR), among others. This blogpost aims to explain why K&S’s erstwhile lion’s share of influence in IP work is gradually being eroded due to two main reasons, firstly increased competition among existing law firms in IP practice and secondly, the emergence of new firms with offering considerable expertise in IP practice.

From the outset, it is important to state that IP law remains a niche area of practice in Kenya. According to LSK’s online search engine, there are only 22 Advocates out of a total number of 7264 that spend a minimum of 55% of their time dedicated to IP practice. This search of Advocates by specialisation can be done at LSK’s page here.

Similarly, KIPI has its own list of Advocates, namely those who have been admitted to practice before the Industrial Property Tribunal and the Registrar of Trade Marks. The current list is available here from KIPI’s website. KIPI has registered about 340 patent agents. With a population in Kenya of roughly 43,000,000, and now assuming that all patent agents are “active”, that equates to about 1 patent agent for every 126,000 people.

With regard to patent and trade mark prosecutions, this blogger randomly sampled four publications (January 2014, March 2014, June 2014 and September 2014) of the Industrial Property Journal, which is the official Journal of Patents, Industrial Designs, Utility Models and Trade marks published by KIPI. Since each of the publications mentions the specific law firms acting as agents with respect to the various trade mark, patent and industrial design prosecutions, this blogger counted the number of times each of the eleven firms was mentioned. The results have been presented in the pie-charts below:

IP Kenya Survey 2 TM

IP Kenya Survey 2 PAT

IP Kenya Survey 2 ID

The first thing that the crunchy pie-chart numbers demonstrate is that CH appears to have overtaken K&S as the leading firm in trade mark prosecutions. In this regard, this blogger recalls the on-going partnership dispute between CH’s IP Partner and MMC Africa, which may have a significant impact on CH’s future IP practice. Secondly, the competition appears to be heating up between several indigenous firms namely G&C, CFL, MMC Africa, NNK and JKM.

Thirdly, the merger of HHM Advocates and Oraro & Company Advocates to form the law firm HHM Oraro Advocates is a significant boost to HHM’s standing as an IP firm. This blogger has previously discussed here the HHM Oraro merger and its possible effects on IP practice. HHM Oraro’s star litigator, Kiragu Kimani continues to impress in contentious IP work, see for instance the Bata case (discussed here) and the Digital Migration case before the Supreme Court (discussed here).

Finally, this blogger reckons that ‘web presence and online activity’ ought to be a criteria when considering the performance of IP firms. Generally speaking, the Kenyan IP firms mentioned continue to perform very poorly in the area of publishing current and up-to-date IP news, information, articles on their respective websites. Perhaps, the consideration of this criteria by established ranking systems would jolt the firms into taking their online presence a bit more seriously!

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