Protection of Well Known Marks in Kenya

On this subject of well known marks, this blogger invites readers to listen to audio recordings of the presentations made by KIPI trade mark examiners during a workshop held in January 2014 available here. Readers may also wish to download Caroline Muchiri, Advocate’s powerpoint presentation made in February 2014 available here.

Below are my reactions (in bold) to some of the issues addressed in Caroline’s presentation

Read the full article here.

Protection of “BASMATI” in Kenya as Trade mark or Geographical Indication?


In a recent ruling by the Registrar of Trademarks, it was found that the word BASMATI does not enjoy prima facie recognition as a geographical indication (GI) in Kenya therefore its registration is permissible as a trade mark. A full copy of this ruling available here.

In this matter, Krish Commodities Limited (the applicant) had applied to KIPI for registration of six marks all bearing the word BASMATI. The Agricultural and Processed Food Products Export Development Authority (APEDA), a statutory body under the Indian Ministry of Commerce which is primarily in charge of export and development of agricultural and processed food products, including BASMATI rice filed a notice of opposition. APEDA argued that BASMATI was a GI that specifically denoted “a special and unique aromatic long grain rice grown and produced in a specific region of the Indian sub-continent, at the foothills of the Himalayas and falling in India and Pakistan.”

Through its local counsel, APEDA argued that the applicant sought to benefit from the substantial reputation and goodwill built up in connection with the name BASMATI. In this connection, it was alleged that the proposed registration was meant to deceive the public into believing that the applicant had proprietary rights over the word and name BASMATI or to cause confusion in the minds of the public as to the origin of the goods, and that the application was likely to impair, interfere with or take unfair advantage of the distinctive nature of the GI BASMATI.

In response, the applicant claimed that APEDA lacked locus standi to institute opposition proceedings as it was not the owner of the mark as desired to be registered. Furthermore, the applicant contended that it was not claiming any exclusivity to the word BASMATI and had agreed to disclaim the use of the word BASMATI. In this connection, the applicant contended that the application was not to register the mark BASMATI on its own but for the registration of different marks consisting of a combination of words. It was further claimed by the applicant that the word BASMATI was a common everyday word in the food and rice trade.

In making his ruling, the Registrar identified several key issues for determination including: the locus standi of the opponent; the legal position regarding ownership of the mark BASMATI in Kenya and the status of the word BASMATI under Kenyan law. In the first instance, the Registrar found that APEDA as the opponent had the locus standi to bring the oppositions. However the Registrar found that APEDA had failed to establish any proprietary rights to the word BASMATI such as would enable it to prevent its registration as a mark by any other party. The Registrar also found that APEDA had not established that under Kenyan law the word BASMATI is a mark whose registration is prohibited by reason of its being a geographical indication.


This blogger was particularly delighted by the Registrar’s fancy footwork in steering clear of the rice wars between India and Pakistan over the registration of BASMATI as a Trade mark or a Geographical Indication.

At the international level, it has been argued that not much has changed since the TRIPS Agreement and therefore GI owners like APEDA continue to struggle to protect names like BASMATI in a world with no uniform mechanism for protection of GIs.

At the national level, it clear that there has been increased awareness and protection of GIs, In the present case, the Registrar is fully cognisant of the government’s obligations under TRIPS but finds that APEDA failed to take necessary steps to secure its IP rights in the word BASMATI within Kenya. In particular, it is important to note the enactment of section 40A of the Kenya Trademarks Act which was made in conformity with TRIPS, specifically to cater for GIs. This provision provides that geographical names or other indications of geographical origin may be registered as collective trade marks or service marks.

CIPIT Proposes Kenya Association of Intellectual Property Professionals (KAIPP)

CIPIT Banner

The Strathmore Law School Centre for Intellectual Property and Information Technology Law a.k.a CIPIT has just announced that there will be a stakeholders’ meeting to discuss and agree on the proposed creation of an Intellectual Property (IP) association for Practitioners in Kenya, tentatively christened it the Kenya Association of Intellectual Property Practitioners or KAIPP.

This meeting will take place during the next IPCheckin Meet-up scheduled for 8th June, 2013 at Strathmore Law School from 11:00am.

In preparation for this meeting, CIPIT has prepared a draft constitution for KAIPP available here.

This on-going push for a fully fledged IP association in Kenya comes in the wake of encouraging news from Nigeria. Afro-IP reports that the Intellectual Property Lawyers Association of Nigeria (IPLAN) has gone to court to challenge a move by the Nigerian Registry of Trademarks, Patents and Designs to only accept electronic applications for registration of trade marks, patents and designs filed by accredited agents. IPLAN contends that this move unlawfully creates compulsory accreditation system for law firms, stakeholders and potential registrants as well as illegally purports to increase or prescribe additional fees. We will be keenly following this case as it develops.

Meanwhile, back home, this blogger is fully in support of an IP Association in Kenya and for Kenyans.

Looking forward to seeing you at on the 8th of June 2013 at 11:00am. Bring a friend or three.

Judge Erred on Intellectual Property in Faulu Kenya vs Safaricom M-Shwari Case


This blogger, in an earlier post, had expressed optimism and hope in Mr. Justice JB Havelock’s ability to preside over this high-stakes intellectual property (IP) case with clarity and wisdom.

Recently this hope has been somewhat dashed by what can only be termed as a gross and unfortunate oversight by Judge JB Havelock in a ruling he made on 20th December, 2012.

A copy of this ruling is available here.

At paragraph 12, the learned judge claims that he “really cannot see that the plaintiff’s concept paper.. qualifies” as per the interpretation section the Copyright Act, which defines inter alia the various categories of copyright works. Havelock even goes further to reproduce the entire definition of “literary work” under the Act and yet shockingly admits:

Try as I may, I do not seem to be able to fit the Plaintiff’s said concept paper into any of these categories…

Reading this section of the ruling, one is left wondering why the learned judge would chose to ignore the words “works similar thereto” in the definition of literary work. It is clear that a concept paper is a literary work in the proper interpretation of the Act. In light of the above, one is left doubtful whether the judge will be able to address the elephant in the room of this case, namely the idea/expression dichotomy and the limits of IP protection for Faulu Kenya’s creation.

This blogger has since done some background research on the learned judge and discovered yet another gross misinterpretation of the Copyright Act.

In a previous life Mr. Jonathan Bowen Havelock was Partner at Havelock, Muriuki & Raval Advocates and was advising Southern Cross Safaris Limited in a matter involving Music Copyright Society of Kenya (MCSK). There were two main issues raised: 1) Does the playing of a FM radio station in a public service vehicle constitute infringement of a copyright? and 2) What is the nature and scope of MCSK’s mandate?

In an opinion to Southern Cross dated August 4th 2008, Havelock wrote:

“it is quite clear from section 26 and 27 that the copyright license is obtained by the broadcasting authority and not by the end-user. The client is, in this instance, an end-user.”

This remark is indeed appalling and misleading in that it fails to distinguish between two distinct types of commercial exploitation of musical works under copyright, namely: broadcast and communication to the public.

Section 2 of the Act reads as follows:

“communication to the public” means –
(a) a live performance; or
(b) a transmission to the public, other than a broadcast, of the images or sounds or both, of a work, performance or sound recording;” (Emphasis mine)

Section 2 of the Act also defines “broadcast” as:

“the transmission, by wire or wireless means, of sounds or images or both or the representations thereof, in such a manner as to cause such images or sounds to be received by the public and includes transmission by satellite;”

From the sections referred to by Havelock, there is a clear distinction made between private and domestic use and other uses where revenue is generated. Therefore in the case of a PSV, there can be no doubt that the use of musical works is commercial in nature. In line with the definitions above, the PSV’s exploitation of musical work is not a broadcast but rather a communication to the public or public performance. It thus follows that both the broadcast and the public performance form part of the copyright owner’s economic rights and all other users must be licensed as plainly spelled out in the Act.

On the question of MCSK’s mandate, Havelock wrote:

“..for MCSK to be able to fulfill its mandate, it would have to have entered into an agency contract with each individual performer, whose performance it seeks to protect”.

One wonders why the Havelock failed to take cognisance of the fact that musicians sign a deed of assignment with MCSK on their registration as members, which allows MCSK to control their public performance and reproduction rights in respect of their musical works as declared to the Society.

To sum up, this blogger submits that Kenya’s Judiciary must be continuously trained on all aspects of IP, not just copyright and related rights. The Judicial Training Institute must reach out not only to the governmental IP agencies but also to institutions like CIPIT who are better placed to impart on judges and magistrates both theoretical and practical knowledge of the various branches of IP and its application both locally and internationally.

#ipkenya Weekly Recap of Intellectual Property News from Around Africa

This week, IPKenya focused on South Africa’s recently released Copyright Review Commission Report and shed light on some of the emerging issues surrounding copyright administration of collecting societies both in the South and in Kenya. The post is available here.

Here are some of the other important IP-related stories IPKenya came across this past week:

– “Should Colour be Registrable as a Trade Mark in Kenya?” [Strathmore CIPIT Blog]

– Kenya: local artiste DNA sues bank for copyright infringement and passing-off [The Standard]

– “South African photographer – images tell a story, but who owns the copyright?” [Adams & Adams]

– Zambia: Patent and Companies Registration Agency (PACRA) Reviewing Intellectual Property Laws [The Times]

– Kenya: “State warned on ditching copyrighted software” [The Standard]

– Nigeria: Intellectual property rights to get federal government protection [The Business Day]

– “Medals, Models & Moguls” – IP Rights and Fashion Roundup [Stellenbosch Chair of IP]

– Kenya: “Why companies need intellectual property policies” [The Business Daily]

– South Africa: Rev. Abe Sibiya appointed new chairman of SAMRO [SAMRO]

– Africa’s largest collecting society changing from company limited by guarantee to a cooperative? [YouTube]

– “The GAP Widens…” – Ownership and use of the GAP trade mark in South Africa [Spoor & Fisher]

– “Kenya’s M-PESA technology & emerging intellectual property issues” [Cayman Financial Review]

– South Africa: “Patently Wrong – The jury’s verdict in Apple v Samsung” [Stellenbosch IP Chair]

– “Climate change and adaptation in Africa: evidence from patent data” [TradeMark Southern Africa]

– Kenya: Safaricom seeks out-of-court deal in copyright dispute. [The Business Daily]

– South Africa: “CRC Report 2011: DALRO licensing agreements” [Copyright & Education]

Finally, for all IP enthusiasts in Kenya, please note that there’s an upcoming IP Check-in Session on 13th October 2012 at Strathmore University. The discussion topic will be “Cultural Expressions and Traditional Knowledge: Protection Mechanisms, Modalities of Management and Commercialisation, for Community Benefit”
IPKenya urges you all to mark this date on your calendars, come prepared to brainstorm and share ideas on how we should develop this potentially fourth branch of IP in Kenya.

IP Check-In: Monthly Discussions on Intellectual Property in Kenya

“IP Check-In” (Follow @IPCheckin on twitter) is a vibrant group of Intellectual Property (IP) enthusiasts in Kenya who meet every month to discuss topical IP issues in Kenya as well as developments and emerging trends in IP from around the world. This month, IPKenya joined the IP Check-In group at iHub Nairobi and the topic under discussion was: “Copyright infringement in the Digital Environment”.

Here are some of the issues that arose during the discussions:

Policing of rights online:

Some participants felt that there was need for both KECOBO, other government stakeholders and CMOs to raise awareness among their respective constituents on the importance of online surveillance of their works. A simple google search could reveal the various instances in which the work of a copyright owner has been used. In this regard, copyright owners must be aware of important mechanisms such as the DMCA notices and take-downs which allow them to report copyright infringement to the sites hosting the alleged infringing content especially on sites like YouTube.

Engagement with IP agencies and key stakeholders:

Participants at IP Check-In were unanimous that we, as IP enthusiasts in Kenya, have a role to play in ensuring that both private and public sectors support, promote and respect the intellectual property rights of the people of Kenya. Therefore, as opposed to merely criticising the government, participants at IP Check in felt that there was a need to engage with the government positively and tirelessly to ensure that objectives are met and issues are addressed satisfactorily.

The case in point was the Miguna Miguna affair which IPKenya discussed recently. With the benefit of hindsight, it was agreed that we ought to have written as interested parties to the Kenya Copyright Board and demanded that they take appropriate measures to discourage the rampant online sharing of illegal copies of Miguna’s book especially via social media.

On a broader level, IPKenya also believes that IP Check-In could start following up closely with the activities and programmes of the IP agencies, demanding timely and full disclosure of all important information in their custody. Furthermore, IP Check in could also keep track on the progress and status of pending Bills (eg. GI and TK) and make recommendations and proposals to the various IP agencies.

Online Protection of Copyright Work: What Should Miguna Have Done?

Some participants at IP Check-in agreed that the .pdf version of Miguna’s book, supplied for purposes of serialisation, ought to have been watermarked in a manner that deters unauthorised circulation in addition to specific technological protection measures to ensure that the file cannot be copied, downloaded or used on other computer devices or uploaded online.

Fair Dealing/Fair Use in the Digital Environment

It was agreed that no party to the Miguna case can successfully rely on the fair dealing (fair use) provisions of the Copyright Act. At the height of the Miguna-mania, there were many who claimed that they were not infringing copyright in the book because they were not engaged in commercial use of the book. However, this misconception was clarified and it was stated clearly that the fair dealing exceptions and limitations in the section 26 of the Copyright Act apply only to legally acquired copyright works. Therefore forwarding emails containing the work amounts to infringement of the copyright owners’ right of reproduction and distribution. Thus, in such cases, fair dealing cannot be relied upon as a defence. IPKenya is thankful to the brilliant minds at IP Check-in for finally laying this issue to rest.

The Ever-Contentious Section 36 of the Copyright Act:

Some participants expressed reservations with the newly amended section 36 which deals with authentication of copyright works. In this regard, it was contended that there would not be an adequate “control system” if KECOBO is the same body registering works for purposes of authentication and also creating and issuing the authentication devices. Another issue raised in this connection was that this provision is inconsistent with the objects and principles of devolved government because KECOBO operates solely from the capital city Nairobi whereas those affected by section 36 reside in every corner of Kenya and are forced to travel all the way to Nairobi.

Monthly IP Round-up:

At the end of the discussions, IP Check-in participants shared their views on the important IP highlights from the July-August period, some of the topics mentioned in this IP round-up included:

– Who owns the sculpture – the 1 billion copyright infringement suit against the Bank of Uganda ( previously discussed by IPKenya here)
– the viral Jack Daniel’s ‘cease and desist’ letter – would this work in Kenya? (discussed by @ThatAkinyi here)
– Monsanto Awarded $1 Billion Against DuPont for patent infringement of its GMO seed variety.
– the on-going Olympics, image rights of athletes, character merchandising and the role of Brand Kenya.
– plagiarism in the news: Fareed Zakaria, Lamido Sanusi.
– Are the contents of patent claims subject to copyright?
– In the absence of a GI law, why not register certification marks for our agricultural products eg. tea, coffee etc?

All in all, the IP Check-In Meet-up was well worth attending and IPKenya would recommend all IP enthusiasts in Kenya to join and be a part of this important initiative.

The next IP Check-in will be on the 8th of September. See you there!

Some Gleanings: Intellectual Property Rights Infringement in the Digital Environment

Recently, IPKenya was privy to a Q&A session between a member of the group “IP-Checkin” (@IPCheckin on twitter) and Dr. Marisella Ouma, Executive Director of KECOBO. One particular item stood out:

IP Check-in: Has KECOBO considered how to have Section 36 come into full effect with regard to the Digital Works? Is there a definition of digital works as well forthcoming? Or can the definition of works in the current Act be extended and if so how?

Dr. Ouma: Section 36 currently applies to physical copies only. In the digital environment, the rights holders have to use technological protection measures. However, discussions on the amendment of the section to encompass the digital environment works are on going. There is no specific definition of digital works as the works are the same whether in physical or digital format. (Copyright will still cover literary, artistic, and musical works as well as sound recordings, broadcasts and performances) but this will be addressed in the amendment. Copyright protects the original expression of an idea in tangible form regardless of the format (digital or physical).

Intellectual property rights are legal means to protect and balance the interests of an individual against those of the public. This is done in terms of disclosure, dissemination, alteration, use and abuse of ideas, with an exclusive right to control and profit from invention and/or authorship of such intangible goods, services and ideas. In this regard, it has become relatively easier to infringe IP through the use of electronic technologies. Therefore, there is an urgent need to formulate a system of laws that define and protect intellectual property as a response to technological change, particularly emerging circumvention technologies that are constantly defying copyright on electronic systems. In this context it is clear that Kenyan IP law is not fully equipped to deal with the implications of the internet, convergence, multimedia and digital technology.

Copyright implications of the internet
Taking the specific case of copyright law, these rights ensure protection of information from duplication and distribution. However computers are changing the way that copyrighted goods can be illegally copied and distributed. All this occurs cheaply and easily. This creates new challenges from copyright owners and law enforcement agencies like KECOBO in that the distinction originally drawn between copying and distribution is blurred. It follows that if digitised works are stored or made available for access, or if they are transmitted without authorisation, it is difficult to establish copyright infringement because: 1) it is difficult to establish the identity of the person who transmitted an infringing copy of a work – was it the host, the access provider, or a remote user?; 2) the removal of rights-management information makes it difficult to prove copyright ownership.

Kenya and the WIPO Internet Treaties
Over a decade ago, WIPO has formulated a number of IP treaties, including the WIPO Copyright Treaty (WCT) 1996 and WIPO Performers and Phonograms (WPPT) 1996, jointly referred to as the WIPO Internet Treaties. Although Kenya participated in the WIPO Diplomatic Conference of 1996, which adopted the WCT and the WPPT, the country has not yet ratified these treaties. The WCT covers the following issues: the rights applicable to storage and transmission of works in digital systems, the limitations on and exceptions to rights in a digital environment, technological measures of protection and rights management, information and right of distribution and its scope.The WCT is of particular importance as far as the the “reproduction right” is concerned. Reproduction is applied to the storage of works in digital systems of permanent, temporary, transient and incidental nature.

Therefore the following would all amount to copyright infringement (reproduction) of a work: saving a work on the hard disk of a computer or on a CD, dowloading a work which has been placed on a website (either by saving it on disk or by printing it), displaying a work on a computer screen or uploading a work on a website.

The WCT also addresses another important issue: Does transmitting a work in digital form over the internet constitute infringement of copyright? To deal with this unique problem of works transmitted on the internet, the WCT creates a new right of communication to the public which grants copyright owners the right to control the transmission of their copyright works on the internet. In this regard, Article 8 on Right of Communication to the Public reads as follows:

“Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.”

The question which then arises is whether the provision of physical facilities for enabling or making a communication (eg. by an ISP) amount to communication within the meaning of this Treaty?

Fair Dealing on the Internet
Section 26 of the Copyright Act provides for a number of defences to copyright infringement known as instances of fair dealing. These include instances of scientific research, private use, criticism or review, or the reporting of current events subject to the acknowledgement of the source. In terms of Article 10 of the WCT, signatories may carry forward and appropriately extend limitation and exceptions to the digital environment. It has been argued that the fair dealing provisions in the context of digitised use should be approached just as they are in the ‘traditional’ ‘physical’ environment.

Liability for Online Infringement
The technical role played by Internet Service Providers (ISPs) in the digital environment establishes potential liability of ISPs.
The central question here is this: “Should ISPs be treated as electronic publishers, and thus made directly liable for all the infringing terabytes flowing from their servers? Or are they mere postmen of the internet, common carriers exempt from all liability?”

It has been argued that Kenya should follow the American model as enshrined in the Digital Millenium Copyright Act, whose basic principles on ISP liability are as follows: access providers are who act as ‘mere conduits’ are exempt from liability; in the absence of knowledge or awareness, hosting ISPs are not liable for damages; once hosting ISPs acquire the necessary knowledge that or ‘awareness’, they are not liable for damages if they immediately disable access to the infringing content.

Parting shot

Although IPKenya has noted that section 35 of the Copyright Act may have been inspired by the WCT, why has Kenya still not ratified the WCT and WPPT?

Licensing Digital Works and Copyright Law in Kenya

Editor’s note:
IPKenya invites you all to an IP discussion session dubbed ‘IP Check-in’ to be held at the Nairobi Innovation Hub (*iHub_) on Saturday May 12, 2012 from 11 am. The topic of software licensing and intellectual property will be discussed.

Our point of departure is that in Kenya, the definition of a ‘computer program’ under the Copyright Act envisages software to be part of literary works. A computer program is defined as follows:

a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.

In some jurisdictions, like the US, software has been protected under copyright and patent as well.

Licensing is one of the means by which the owner of copyright can exercise his or her economic rights. In this regard, Section 33 of Kenya’s Copyright Act states that:

33.(1) Subject to this section, copyright shall be transmissible by assignment, by licence, testamentary.disposition, or by operation of law as movable property.

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