Proposed Amendments to Intellectual Property Laws in Kenya

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On 11th November, 2016, pursuant to Special Issue of Kenya Gazette Supplement No.185 (National Assembly Bills No. 45) the Attorney General published the Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016. It is recalled that this Bill is intended to “make minor amendments which do not merit the publication of separate Bills and consolidating them into one Bill”. The Bill proposes to amend several intellectual property (IP) laws including Industrial Property Act, 2001 (No. 3 of 2001), Copyright Act, 2001 (No. 12 of 2001) and Anti-Counterfeit Act, 2008 (No. 13 of 2008).

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High Court Strikes Down Appointment of Anti-Counterfeit Agency Board Chairman Twice in a Row

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This blogger has come across a recent High Court judgment in the case of Republic v Attorney General & 2 others Ex parte Tom Odoyo Oloo [2016] eKLR in which the appointment of the chairman of Anti-Counterfeit Agency (ACA) was challenged for being unconstitutional.  In the earlier case of Republic v. Attorney General & 3 Others Ex-Parte Tom Odoyo Oloo [2015] eKLR discussed on this blog here, the High Court struck down the appointment of Polycarp Igathe as ACA Chairman and less than one week later on 24th December 2015, the Cabinet Secretary responsible for ACA appointed Igathe as ACA Chairman to take effect from 17th April 2015, the effective date that was the subject of the Court’s orders in the 2015 case. According to the applicant in the present case, this re-appointment of Igathe was both illegal and unconstitutional.

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High Court Declares Appointment of Anti-Counterfeit Agency Inspectors Unconstitutional

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“In my view fresh appointments to the positions of inspectors must be open to the public and such positions must be advertised. It therefore does not matter whether the interested parties were handpicked by the Board or Mr Igathe [Former Chairman of ACA Board of Directors]. The era of handpicking persons and appointing them as public officers was in my view buried with the retired Constitution and has no place in the current constitutional dispensation.” – Odunga J at para. 39.

In a recent judgment in the case of Republic v Anti-Counterfeit Agency Ex parte Moses Maina Maturu [2016] eKLR, the High Court quashed Gazette Notice No. 9451 published on 24th December, 2015 appointing several individuals (enjoined in the suit as interested parties) as inspectors of Anti-Counterfeit Agency (ACA). According to ACA, the present suit was a scheme to paralyze its operations instigated by persons who have been behind several court cases, which ACA has been forced to defend thereby directing its resources away from the fight against counterfeiting.

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Customs Officers Cannot Enforce Intellectual Property Rights: Court of Appeal Judgment in Kenya Revenue Authority v Doshi Iron Mongers

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In the case of Kenya Revenue Authority v Doshi Iron Mongers & another [2016] eKLR, the Court of Appeal was called upon to determine whether Section 5 of the Customs and Excise Act gives an officer of the Appellant (KRA) under the Act powers, rights and privileges akin to those given to a police officer in execution of his duties under Cap 84 of the Laws of Kenya, in particular that such an officer can enforce intellectual property (IP) rights including raids, arrests and seizure of goods not listed under Schedule 8 of the Customs Act.

In the lower court, the respondents had complained that their warehouses in Mombasa and Nairobi were raided between 1996 and 2006 by the appellant for no rhyme or reason, purporting to search for counterfeit, substandard and uncustomed goods particularly ‘BIC’ biro pens, battery cells, and other items at the behest of companies such as Haco Industries who were the assigned users of the trade mark.

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Court Upholds Anti-Counterfeit Agency Raid and Seizure: Shikanisha Shoes Collection v Attorney General

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How to spot ‘fake’ Timberland shoes 101

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 [2016] 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.

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Anti-Counterfeit Agency Eats Humble Pie as Fake Appointment of Board Chairman Struck Down After Judicial Review

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“Whereas the President had the power to appoint the Chairman of the Anti-Counterfeit Agency, that appointment had to be in compliance with the Constitution and the relevant Legislation since, as I have stated herein above, the President in undertaking his executive functions does so on behalf of the people of the Republic of Kenya and has to bow to the will of Kenyans as expressed in their document delegating their sovereign powers to inter alia the executive, the Constitution. It is the Constitution which sets out the terms under which the delegated sovereign power is to be exercised and those to whom the power is delegated must adhere to it…” – Excerpt from the Judgment by Mr. Justice G.V. Odunga on December 16th 2015.

Towards the end of December 2015, the High Court, in one of its boldest judgments yet, struck down President Kenyatta’s appointment of Polycarp Igathe as Chairman of the Anti-Counterfeit Agency (ACA). Last month, the Cabinet Secretary for Industrialisation and Entreprise Development responded to the High Court judgment by (re-)appointing Igathe as ACA Chairman vide Gazette Notice No. 368 published on January 22nd 2016.

**Update (08/02/16): This blogger has been reliably informed that the above (re-)appointment of Igathe by the Cabinet Secretary has been challenged and an order of stay has been issued by the High Court. More details to follow.

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Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

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As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

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