Following the high profile raid and seizure of a ‘fake’ shoes shop in Nakuru (see video footage here), the court has delivered a recent judgment in the case of Paul Kihara Nduba t/a Shikanisha Shoes Collection v Attorney General & another  eKLR in which the owner of the Nakuru shoes shop challenged the enforcement actions taken by the Anti-Counterfeit Agency (ACA). The Petitioner sought several declaratory orders from the court to the effect that Section 23 (c) of the Anti-Counterfeit Act No. 13 of 2008 is unconstitutional and inconsistent with Articles 23 (2), 25 (c) and 31 (a) of the Constitution of Kenya and that ACA acted in excess of and in violation of Section 31 (a) and (b) of the Constitution.
In determining this petition, the court addressed the following issues: 1) Whether this petition is competent; 2) Whether the seizure of the Petitioner’s goods by ACA was lawful; and 3) Whether the Petitioner is entitled to the orders sought in the petition.
The Petitioner submitted that there having been no complaint lodged by the holders of intellectual property (IP) rights in the goods found in the petitioner’s shop, the seizure of the said goods by ACA was unlawful. Further, it was contended that ACA failed to follow due process as provided in the Act thus their actions thereby infringed upon the Petitioner’s right to privacy under Article 31 of the Constitution of Kenya. In this regard, the Petitioner alleged that the actions of ACA were actuated by malice as demonstrated by the fact that they arrested the Petitioner’s wife on 14th May, 2015 without any justifiable cause purely with the intention of harassing the Petitioner and causing him distress.
The first finding made by the court was that the Petitioner had failed to demonstrate how Section 23(a) and (b) of the Anti-Counterfeit Act is inconsistent with the Constitution. According to the court, it was not enough for the Petitioner to merely cite the sections of law and the Constitution, he needed to go further to demonstrate exactly how or in what manner the statute cited contradicted the Constitution.
In balancing the provisions of Articles 31 and 40(5), the court noted that based upon the provisions of Section 23, the inspector was in fact acting pursuant to written law when he entered, and searched the Petitioner’s premises and also in seizing the goods suspected to be counterfeit. Therefore the actions of the inspector were perfectly in line with the objective of the Act in protecting IP rights as such there was no invasion of privacy. In this regard, the court also clarified that section 34 (4) specifically authorizes an inspector to act ‘suo moto’ ie on his own initiative where there has been a suspected breach of IP rights. As such, the inspector does not need to wait for a complaint from the IP rights holder in order to act. According to the court, it was clear that the legislature intended to give inspectors the right, of entry and search in any situation where they apprehended that counterfeit goods were being dealt with.
On the issue of ACA’s continued detention of the goods seized from the Petitioner, the court found that in order to make a case for return of the goods, the Petitioner must show that they are not in fact counterfeit as alleged. The court held that the Petitioner had not shown this – therefore he had not fulfilled the condition for return of the goods under Section 25(3) of the Act. In this connection, the court held that a proper reading of Section 28 of the Act is that ACA is authorized by law to hold the seized goods for a period of three (3) months pending the charging of any person in court. Once this 3 month period has elapsed, ACA must finalise their investigations and if applicable lay charges in relation to the matter failing which the Petitioner will be entitled to move to court for a return of his seized goods if he so wishes.