Yesterday the Anti-Counterfeit Agency (ACA) posted this response in the comments section of our blogpost last week titled: ‘Controversial 2018 Proposed Amendments to The Anti-Counterfeit Act’. In the face of widespread criticism from intellectual property (IP) experts, ACA has defended its proposed amendments to the Anti-Counterfeit Act which, if enacted, would effectively introduce a system for mandatory ‘recordation’ of trade marks, copyright and plant breeders rights to be administered by ACA.
Prior to writing that blogpost, this blogger had reached out to ACA for an official comment asking the following question: ‘What is your response to public concerns about the implications of the draft amendments to your Act on 1) the mandates of Kenya Industrial Property Institute (KIPI) and Kenya Copyright Board (KECOBO); 2) ease of doing business in Kenya generally; 3) international best practice?’ All the various responses from ACA will be considered in this blogpost.
First and foremost, ACA denies that it is attempting to usurp the mandates of the IP offices, rather it claims that its proposed amendments ‘will enhance their respective mandates’. In the context of trade marks, ACA reckons that the amendments ‘will compel IPR owners to comply with the statutes administered by KIPI by not only making fresh registrations but making timely renewals of e.g. trademarks in active use.’ This reasoning seems to be based on the warped logic that KIPI will mutually benefit from forcing intellectual property rights (IPR) owners to ‘record’ their trade marks with ACA since registration at KIPI is a pre-condition thus increasing the number of applications filed at KIPI’s registry. The same flawed reasoning would apply to patents, industrial designs and utility models at KIPI as well as plant breeders rights at Kenya Plant Health Inspectorate Service (KEPHIS). Sadly ACA’s response fails to explain why it is necessary to ‘compel’ IP owners to bank-roll a parallel record of registered IP yet the relevant IP registers at KIPI and KEPHIS are readily accessible.
With regard to KECOBO’s mandate, ACA claims that the amendments will ‘enhance ease of enforcing copyrights and related rights by ensuring ready availability of information on IPRs imported into the country across the land borders.’ Has ACA conducted any surveys or done any research to show that the main source of pirated goods is imports? Is ACA aware that most of the CDs, VCDs, DVDs and other storage devices found in the country containing infringing content are imported empty? So, what on earth does ACA hope to achieve at ‘the land borders’ with regard to copyright enforcement? ACA’s grand plan to enforce copyright through mandatory recordation is further complicated by the fact that most of the pirated copyright works in Kenya are distributed, sold or offered for sale in digital formats and/or across wireless platforms. Try as it might, ACA would be hard pressed to convince anyone that its proposed anti-counterfeit security device is not just a duplication of the anti-piracy security device currently issued by KECOBO.
On the concern about the ease of doing business, ACA’s response seems to demonstrate a lop-sided view of the role of IP enforcement in creating a ‘conducive environment’ for market players on the one hand and a favourable ‘investment climate’ for those wanting to set up shop in Kenya on the other hand. Local players and foreign investors alike would be wary of any IP regime that presumes them to be criminals if they import any of their own goods if those goods are ‘unbranded’ and/or have ‘not been recorded with the Agency’. The business community is likely to strongly object to a ‘recordation’ process that forces applicants to reveal certain confidential information such as citizenship of IP owners and places of manufacture of their goods.
With regard to the fees for recordation, ACA claims that the ‘fee will replace the usual complaint fee and will be a consolidated figure for ease of operations.’ However, it is worth noting that the application for recordation must be made annually whereas copyright registration is a one-off charge while trade mark registrations are only renewed after ten years. Like the trade mark system, ACA’s proposed recordation system for trade marks will determine fees payable based on the number of classes covered by the registration. There is also the cost of the anti-counterfeit security device which must be paid by IP owners seeking recordation.
Despite the overall problematic nature of these amendments, ACA still insists that the mandatory recordation system is ‘not a fresh registration but a record of what is already registered whereby complainants forward the registration certificates as evidence of the existence of the right for enforcement purposes.’ This begs the question why ACA is hell-bent on creating a parallel ‘record’ of all registered IP in Kenya designed deliberately to by-pass KECOBO, KIPI and KEPHIS who are the legitimate custodians and administrators of IP registrations – all in the name of IP enforcement? The ultimate losers will be IP owners if ACA refuses to consult and collaborate with the various state agencies specifically charged with IP administration.