#TellACABoss Online Debate: Balancing Protection of Public Health and Intellectual Property in Kenya

This blogger has inadvertently stirred a heated debate on social media involving health activists who are actively engaging the government to review Kenya’s Anti-Counterfeit Act. This blogger alerted the twitter accounts of Aids Law Project (ALP), the Anti-Counterfeit Agency (ACA) and the CEO of ACA to an article published on the CIPIT blog by Paul Ogendi – Deputy Director at ALP. In this article ALP raised concerns on the goverment’s implementation of the High Court’s judgment in Patricia Asero Ochieng & 2 Others vs Attorney General. This landmark decision declared the Anti-Counterfeit Act unconstitutional because of its provisions affecting access to essential medicines including generics. In his twitter response, Stephen Mallowah the ACA CEO stated as follows:-

@vcnzm @aidslawprojec @wordpressdotcom I suppose the issue of the absurdity of criminal enforcement of patents got lost along the way

— stephen mallowah (@smallowah) October 2, 2013

@vcnzm @aidslawproject @ACAKenya ACA has to look beyond wedge issues. Wider policy agenda for economic development. Pity NGOs don't listen

— stephen mallowah (@smallowah) October 2, 2013

These responses by the ACA sparked off a spirited twitter campaign under the hashtag #TellACABoss where various health activists reaffirmed that the constitutional rights of people living with and affected by HIV, TB and Malaria remain threatened unless the Anti-Counterfeit Act is reviewed particularly section 2 which defines “counterfeit”.

Read the rest of this article here.

Access to Medicines in the Developing World: No to Evergreening in Novartis Case and No to Patent Linkage in Patricia Asero Case

As part of the World IP Day 2013 activities in Kenya, CIPIT will host a special intellectual property (IP) debate organised by the Aids Law Project (ALP) between students drawn from the local universities. The topic of this debate is: how the Novartis and Patricia Asero court decisions affect public health in developing countries. Although this blogger will not be able to attend the debate in person, what follows are a few ruminations on this debate topic.

The Supreme Court of India judgment in the Novartis case and the High Court of Kenya judgment in the Patricia Asero case seem to have one common consequence: making pharmaceutical companies very unhappy. Both these cases have placed the spotlight on the generic drugs industry. In the developing world, where few people can afford original patented medicines, many opt for generic versions of the same drugs that are sold for as little as 1/10th of the price of the original product. Therefore, what generics companies do essentially is to replicate drugs that are no longer protected by patents. This leaves the pharmaceutical companies with two main issues to deal with: Firstly how do they “extend” patent protection for their well-known drugs? Secondly how do they ensure strict IP enforcement in respect to their patented drugs? The first issue is illustrated in the Novartis case and the second issue appears in the Patricia Asero case.

Read the rest of this article over at the CIPIT Law Blog here.

State of Kenya’s Intellectual Property Protection and Enforcement Regime

A study commissioned by the International Chamber of Commerce (ICC) Business Action to Stop Counterfeiting and Piracy (BASCAP) initiative reports that Kenya’s current intellectual property (IP) rights regime performs poorly in international gauges, ranking 95th of 130 countries in the IPR Index and 106th of 140 economies in the Global Competitiveness Index 2010. The BASCAP report, “Promoting and Protecting the Value of IP in Kenya”, sets out BASCAP’s recommendations for policy and legislative changes needed to bring Kenya’s IP regime and IP enforcement efforts up to international standards.

The full 2013 BASCAP Report is available here.

Legislative recommendations:

+ Address deficiencies in criminal IP law and procedures, particularly fines and penalites in the Anti-Counterfeit Act

+ Improve border enforcement provisions in the Anti-Counterfeit Act

+ Address deficiencies in the Copyright Act, 2001, particularly penalties for infringement and delineation of KECOBO and ACA mandates.

+ Improve and expedite civil enforcement procedures, and procedures with respect to the Trade Marks Act, 2001.

+ Grant powers to the ACA to settle matters out of court under the Anti-Counterfeit Act, 2008 in addition the power to destroy counterfeit goods and impose fines.

Policy recommendations:

+ Establish an inter-agency approach between the different Kenya Agencies administering and enforcing IP rights.

+ Establish an inter-agency approach with private sector coordination.

+ Expand IP-related administrative and technical capacity building

+ Increase public and political awareness of counterfeiting and piracy and the associated economic and social harm.

African Currencies: Intellectual Property Rights and State Sovereignty

“The trademark patent right of the naira notes in circulation is owned by non-Nigerians, the Central Bank of Nigeria (CBN) has revealed.”

That is the opening line of today’s article in a local daily in Nigeria “Leadership” in an article titled: “Foreigners Own Naira Patent – Central Bank of Nigeria”. As many may already know, the Naira is Nigeria’s currency therefore its understandable why this heading and the opening line above were so painful to read. But IPKenya has gotten used to this: several months ago, IPKenya noted that the Minister of Finance here in Kenya made the same mistake while being grilled by a Parliamentary Sub-Committee on a 3 billion shilling currency printing scandal with British firm De La Rue.

It is clear that Kenya and Nigeria have a bigger problem than merely government officials who lack understanding of basic intellectual property. What is worrying is the nature of agreements that our Central Banks are entering into with foreign entities with regard to production of national legal tender. In this connection, it is apparent that not enough consideration is being given to ownership of the copyright and related rights in the bank notes right from conception, all the way to printing. Both governments appear to be outsourcing the entire currency printing operation without making any reservations on ownership of resulting intellectual property, commissioned using tax-payers’ money.

This fact is evidently clear when the CBN Director of Corporate Communications, Mr Ugochukwu Okoroafor is reported as saying: “it was quite shocking to us when we discovered that the patent rights of some of our notes are owned by non-Nigerians…It is dangerous for us as a nation because they can hold us at the neck with it.”

Therefore while IPKenya agrees with that safe-guarding Nigeria’s sovereignty may be a good rationale for redesigning its notes, the real problem lies in the nature of agreements the country enters into with respect to currency design and printing. Although most African countries may not have the technological capacity to design and reproduce state-of-the-art high quality bank notes, the government ministries responsible for procuring the services of foreign companies must also engage relevant IP experts to ensure that all intellectual property rights pertaining to the notes are assigned and not merely licensed.

Tobacco Plain Packaging Law: Intellectual Property Rights versus Human Rights in Kenya

Australia’s Parliament is without doubt one of the most proactive legislatures in the world. In a few short years, it has made history as the first country to legislate on carbon taxes and now it is taking on the multi-billion dollar worldwide tobacco industry. In the above clip, circa 10:53, Richard di Natale, Senator from Victoria had this to say on the need to legislate further against ‘Big Tobacco’:

“The one frontier that has remained open to tobacco companies is on the packets themselves. They are little billboards of nastiness advertising their wares to passers-by from pockets, from kitchen tables, on dashboards of cars, all around the country. And smokers do see the branding on these packets potentially dozens of times a day. And this Bill will remove that opportunity. An opportunity for tobacco companies to compete on grounds of brand awareness and image.

The Tobacco Plain Packaging Act 2011, when it does come into law, will remove the ability of tobacco manufacturers to display logos, images and promotional text on their packs and will replace it all with a plain brown packet. Current health warnings will be enlarged and accentuated… Under the Act it will be an offence to sell a non compliant product with potential penalties in excess of one million dollars for a wilful breach of the act by a body corporate. Under the Act, the packet will be tightly controlled: they have to be made of cardboard, packs have to be rectangular, contain no embossing, the colour needs to be a drab dark brown and no trademarks will be allowed. The location and orientation of the branding variant name are strictly prescribed and the graphic warning will be enlarged to 70% of the front of the packet.

In short, this bill aims to ensure that the packet of cigarettes is as ugly as the product itself.” (Emphasis added)

Australia has now enacted this Bill into law.

Meanwhile here in Kenya, the Tobacco Control Act 2007 remains in force and section 21 of this Act contains the following provisions with regard to packaging of tobacco products:

“21 (2) Every package containing a tobacco product shall –

(a) have at least two warning labels of the same health messages, in both English and Kiswahili, comprising of not less than 30% of the total surface area of the front panel and 50% of the total surface area of the rear panel, and both located on the lower portion of the package directly underneath the cellophane or other clear wrapping;
(b) bear the word “WARNING” appearing in capital letters and all text shall be in conspicuous and legible 17-point type, unless the text of the label statement would occupy more than seventy percent of such area, in which case the text may be of a smaller but conspicuous type size, provided that at least sixty percent of such area is occupied by the required text; and
(c) bear text that is black on a white background or white on black background in a manner that contrasts by typography, layout or colour with all other printed material on the package.

(3) All the warning labels specified in the Schedule shall be randomly displayed in each twelve-month period on a rotational basis and in as equal a number of times as is possible, on every successive fifty packages of each brand of the product and shall be randomly distributed in all areas within the Republic of Kenya in which the product is marketed.
(4) The Minister may, by notice in the Gazette, prescribe that the warning, required under this section, be in the form of pictures or pictograms; (..)”

Returning back to Australia, in the recent case of JT International SA and BAT Australasia Limited v Commonwealth of Australia [2012] HCA 30, Big Tobacco went to court challenging the constitutionality of the Plain Packaging Act. The High Court of Australia earlier issued orders ruling that “at least a majority of the judges” are of the view the plain packaging regime is valid under the Australian Constitution. The High Court rejected the arguments of Big Tobacco that there was an acquisition of property on less than just terms. See case citation here.

Meanwhile back to Kenya, BAT East and Central Africa Area Director Gary Fagan is reported as being “extremely disappointed” by the court] decision on the Australian Act which he termed as a “bad piece of law”. He adds that:

“”We fully support any form of evidence-based regulation but there is no proof to suggest plain packaging of tobacco products will be effective in discouraging youth initiation or encouraging cessation by existing smokers (…) In fact, plain packaging would only exacerbate an already significant illicit tobacco trafficking problem, and would have other significant adverse unintended consequences including driving down prices which would lead to increased smoking while reducing government tax revenue(…)”

As a matter of fact, earlier this year, IPKenya recalls government authorities raising the alarm over increased sale of counterfeit and smuggled cigarettes in Kenya. Kenya Anti-Counterfeit Agency (ACA) reported that cigarettes are rapidly becoming the most illegally traded product in the region, while health experts warned a health crisis could be looming. Local cigarette makers BAT-Kenya and Mastermind Kenya Ltd estimated that counterfeiters pocket upwards of US$1.05 billion (Sh100 billion) every year from sales across East Africa.

Comment:

In deciding whether Kenya should or shouldn’t follow Australia’s bold legislative approach, IPKenya asks: Is destroying trade marks or brands of Kenyan cigarette companies in order to discourage the use of tobacco products reasonable and justifiable under the limitation clause in Article 24 of the Constitution?

Unlike in Australia, Kenya’s Constitution has over 3 specific provisions on intellectual property rights including the broad provision on the protection of right to property enshrined in Article 40. In this regard, the stand-out constitutional provision which would need some legislative and judicial interpretation is Article 40(5) which states: “The State shall support, promote and protect the intellectual property rights of the people of Kenya”. This provision alone could form the basis of a constitutional challenge by Kenyan tobacco companies if the government decided to propose a law similar to the Australia’s Tobacco Plain Packaging Act 2011. In addition, Big Tobacco in Kenya may chose to rely on other persuasive arguments mentioned above such as the potential increase of smuggled and/or counterfeit tobacco products and its effect on illegal and organised crime in the country.

If our government was desirous to push for such legislation, it would argue that intellectual property rights must be balanced with other fundamental rights and freedoms also enshrined in the Constitution. In a recent High Court case discussed by IPKenya here, the court considered the intellectual property rights of pharmaceutical manufacturers protected in the Anti-Counterfeit Act but held that the provisions of this Act denied Kenyans access to essential HIV medicines therefore it violates the right to life of Kenyans as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1). The rights under Articles 26(1), 28 and 43(1) of the Constitution in addition to Article 42 on the right to a clean and healthy environment can be relied upon by the State in support of a plain packaging law.

Within Africa, it is reported that South Africa’s government has already expressed its intention to follow Australia’s controversial new tobacco law.

The Case for an Inter-Agency Approach to Intellectual Property Protection and Enforcement

Today marks the opening of an important event by the Anti-Counterfeit Agency (ACA): “Workshop on the Implementation of an Interagency Approach to Intellectual Property Protection and Enforcement: Kenya and the East African Community”

Unlike tangible property, IP is not well understood and thus is highly under-utilised in Kenya. That said, it is no secret that the proper administration and regulation of the intellectual property system in Kenya is faced with two main challenges: enforcement and awareness creation.

The US Department of Justice and the Department of Commerce along with the State Department, Customs & Border Protection and USPTO have been strongly advocating for Kenya and other countries in the East African Community to adopt an interagency approach to protection and enforcement of IP within the countries’ national borders and the EAC as a whole.

While it is often said that enforcement is the best form of awareness creation, one must still ask whether the government, stakeholders and industry players are doing enough to educate, enlighten, inform and advise Kenyans on what intellectual property is all about, why infringement is both morally and legally wrong and most importantly instilling and promoting a culture of respect for intellectual property.

As far as nation-wide IP awareness and IP enforcement, the buck ultimately stops with government and it’s 4 key specialised agencies dealing with IP namely:

a) Kenya Industrial Property Institute – KIPI ( which administers this Act and this Act)
b) Kenya Copyright Board – KeCoBo (which administers this Act)
c) Kenya Plant Health Inspectorate – KEPHIS (which administers this Act)
d) Anti-Counterfeit Agency – ACA (which administers this Act)

Effective and efficient utilisation of IP can be well facilitated by creation of a knowledgeable, skilled and positively-cultured human resource base through public awareness and training programmes in IP. In view of, and in order to facilitate, this, KIPI, KeCoBo, ACA and KEPHIS under the support of their parent ministries: Industrialisation, State Law Office and Agriculture should be mandated with the task of designing and implementing an Inter-Agency Intellectual Property Protection and Enforcement Strategic Plan (IPPESP).

This Inter-Agency IPPESP would aim at inculcating a culture that promotes creativity and innovation, protection and commercialisation of IP in Kenya through enhancement of awareness and utilisation of IP for industrialisation in accordance with the Constitution of Kenya, 2010 and our national development blueprint, Kenya Vision 2030.

The five strategic objectives of the Inter-Agency IPPESP should be:
1. To create general awareness in intellectual property matters. Eg. Electronic, print media
2. To train selected target audience on the various aspects of IP matters and relevance in operations of the targets
3. To promote creativity, innovation and IP enforcement in Kenya
4. To propagate emerging IP issues in Kenya; and
5. To ensure efficient and effective implementation of the IPPESP.

At present, the Government recognises (on paper) that the IP system as an important tool for trade, incentive for investment and thus a catalyst for national growth in this world’s liberalised economy. Consequently, as a commitment to regional/ international co-operation, Kenya is actively involved in formulation and implementation of regional/ international policy on IP system, and is partly to the main regional/ international treaties/agreements on IP. Nationally, the Government is devoting resources towards putting in place machinery for effective and efficient administration and management of the IP system within its territory, and all main aspects of IP are administered and managed in Kenya by four IPOs.

That said, adopting an inter-agency approach to IP enforcement in Kenya would not be without its set of challenges. The following key obstacles have been identified:

1. Challenge of coordination in terms of enforcement and public awareness
2. Conflict management and avoidance: between the various IP agencies, especially due to overlapping mandates and jurisdictions.
3. Capacity building
4. Confidentiality and information sharing
5. Multiplicity of legal provisions and procedures

In response to these challenges, a host of solutions have been proposed in the past:

1. Establishment of a CEOs Forum
The CEO forum would be convened by ACA (because it’s empowering legislation is the broadest IP statute on enforcement and protection) and this Forum would establish a mechanism/task Force to review current IP legislations with a view to harmonizing them and enhancing inter-agency cooperation.

2. A Memorandum of Understanding (MOU) between the four IP agencies
This MoU would be prepared and signed by the CEO/Executive Directors of the the four IP agencies comprising the CEOs Forum.

3. Establishment of Committees as agreed under MOU
An important committee in this regard would be a IPR Enforcement Committee comprising of persons who head the enforcement departments in the respective four IP agencies. Other committees would be be defined in the MOU and/or constituted as and when need arises under the Forum of CEOs.

4. Establishment of formal mechanisms for private-public consultations on enforcement of IPR

5. Establishment of a formal mechanism that brings together various Tribunals that enforce civil IP rights.

With this background in mind, ACA’s three day workshop starting today is aimed at arriving at “the best way to implement an interagency approach to IP protection and enforcement.”

IPKenya looks forward to the Workshop’s outcomes.

Kenyan Intellectual Property Law Practice Strikes Gold

One of Kenya’s most prominent corporate law firms, Iseme, Kamau & Maema Advocates (IKM), has been named as one of the top 1000 global law firms in trademark law practice and related intellectual property matters. The World Trademark Review 1000, which is in its second edition, is an essential guide to the world’s leading trademark professionals. The WTR 1000 recommends 1000 global law firms and attorneys considered to be the leaders in the field and delivering top-quality trademark services.

IKM is now in the WTR 1000 Gold Band.

The WTR 1000 “Gold” band is described as follows:

“Firms and individuals in the gold band are those that attract the most positive comments from sources. We have identified them as the crème de la crème; their success hinges on reputations established over lengthy periods of time, something which enables them to secure the most high-profile, big-ticket work from the most demanding of clients.”

IKM Partners: (L-R) Martin Munyu, Anne Kinyanjui, James Mburu Kamau, William Ikutha Maema, Karori Kamau

In reacting to the news, William Maema, IKM Head of IP said, “As an indigenous law firm, we are humbled, yet encouraged by the gold ranking which speaks volumes of our professional capacity to deliver world class intellectual property and related trade mark counsel to our clients”.

He further added: “Intellectual Property specialisation may well be an emerging space within the local jurisdiction and we are proud that we have retained a wealth of experience to help us guide our clients through.”

In Kenya, IKM Advocates has been named as a Gold Band law firm alongside Kaplan & Stratton Advocates.

IPKenya would like to congratulate IKM as well as the other five firms in Kenya that have been named in the Silver Band. However IPKenya is disappointed that none of these law firms are publishing articles, reports and other useful guidelines on intellectual property law and practice as it evolves in Kenya and within East Africa. Hopefully, this will change and we will begin to demystify intellectual property law for SMEs and the public at large.

IPKenya is pleased that the World Trademark Review rightly recognises Kenya as the “commercial hub of East Africa and a focal point for trademark activity in the region”. WTR 1000 also acknowledges Kenya as an attractive market for multinationals seeking to protect and enforce their trademark rights because of the quick turnaround time on trademark registrations and the increasing levels of IP specialisation in the judiciary. Furthermore the WTR notes that the Anti-counterfeit Agency – established under the Anti-counterfeiting Act – is now in operation to enforce IP laws including the rights of brand owners.

Kenya’s Top IP Lawyers to Attend International Trademark Association INTA Annual Meeting

You’ve probably heard that next week, 9,000 professionals from around the world are expected to attend the International Trademark Association (INTA) Annual Meeting in Washington, DC from May 5 to 9 2012.

Some of the topics on the agenda include international trademark issues, including developments in international trademark laws, tactics for fighting global counterfeiting and effective strategies for domain management.

Here are the IP practitioners from Kenya that have confirmed their attendance (in alphabetical order):

> Anti-Counterfeit Agency (ACA) – represented by its CEO/Executive Director
> CFL – represented by 1 of its Partners
> Coulson Harney (CH) – represented by 1 of its Partners
> Hamilton, Harrison & Mathews (HH&M) – represented by 1 of its Partners
> Iseme, Kamau & Maema (IKM) – represented by 1 of its Partners
> Kaplan & Stratton – represented by 1 of its Partners
> Muriu Mungai & Company (MMC) – represented by 3 of its Partners

IPKenya has noted an interesting item on the INTA Meeting Program scheduled for Wednesday 9th May:

RW01 Regional Update: Africa
Intermediate Level

Panelists will discuss strategies and pitfalls for using an international system and the regional trademark registration systems in Africa, Organisation Africaine de la Propriété Intellectuelle (OAPI) and African Regional Intellectual Property Organization (ARIPO) to protect your trademarks. Many African countries are members of the Madrid System. The panel will also cover current hot topics in Africa.

Moderator:

Marco Van de Merwe, Spoor & Fisher (South Africa)

Speakers:

Ephraim N. Ngwafor, Ngwafor & Partners (Cameroon)
Michael F. Sevant, Spoor & Fisher Jersey (Channel Islands)
Gift Sibanda, African Regional Industrial Property Organization (ARIPO) (Zimbabwe)

Although IPKenya will not be attending this formidable meeting of IP minds, it is hoped that the participants representing Kenya and the other African participants will truly put African Intellectual Property on the map during this Africa Session at INTA.

IPKenya trusts that Afro Leo (who most certainly will be in attendance) will blog about the issues, discussions and outcomes of this session and the INTA Annual Meeting as a whole.

For those who, like IPKenya, will not be attending INTA, you can follow the events via the INTA website (http://www.inta.org) or on twitter using the #INTADC hashtag.

The Rise of Constitutional Intellectual Property in Kenya

In a recent judgment in the case of Patricia Asero Ochieng, Maurine Atieno and Joseph Munyi vs Republic H.C.C.C. Petition No. 409 of 2009 handed down by Lady Justice Mumbi Ngugi (also known as “Kenyan Jurist” in blogging circles), the Constitutional Division of the High Court held that one of Kenya’s intellectual property laws namely the Anti Counterfeit Act was unconstitutional.

The full text of the judgment is available here.

At paragraph 87 of the judgment, the court’s ruling on the unconstitutionality of this IP act reads as follows:

Sections 2, 32 and 34 of the Anti Counterfeit Act threaten to violate the right to life of the petitioners as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1) and the court hereby grants the declarations sought by as follows:

(a) The fundamental right to life, human dignity and health as protected and envisaged by Articles 26(1), 28 and 43(1) of the Constitution encompasses access to affordable and essential drugs and medicines including generic drugs and medicines.

(b) In so far as the Anti Counterfeit Act, 2008 severely limits or threatens to limit access to affordable and essential drugs and medicines including generic medicines for HIV and AIDS, it infringes on the petitioners’ right to life, human dignity and health guaranteed under Articles 26(1), 28 and 43(1) of the Constitution.

(c) Enforcement of the Anti Counterfeit Act, 2008 in so far as it affects access to affordable and essential drugs and medication particularly generic drugs is a breach of the petitioners’ right to life, human dignity and health guaranteed under the Constitution.

World Intellectual Property Day Almost Here: Current State of IP in Kenya

Editor’s note:
This post is divided into three parts:
1. Recap of major IP developments in Kenya so far.
2. World IP Day celebrations in Kenya.
3. Visionary innovators in Kenya – two personal picks.