In Regulation We Trust: Kenya Copyright Board Proposes New Set of Administration and Enforcement Provisions

kenya copyright board kecobo

To date, Kenya Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs) available here and on intermediary liability for internet service providers available here. KECOBO has now published a third set of draft legislative proposals namely a draft copyright regulations 2016 available here. These three sets of draft proposals will be the subject of a day-long consultative public forum to be held next week on February 11th 2016 at the Auditorium of NHIF Building starting at 8:00am. For those who will not be able to attend the public forum, KECOBO has set up an email account to receive your comments on the drafts, which is: publicforum@copyright.go.ke. This blogpost is a commentary of the key features of the draft copyright regulations 2016 proposed by KECOBO.

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Kenya Set to Earn Millions in Individual Fees from WIPO Madrid System

Kenya Madrid Declaration 2014

Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.

Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.

As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.

In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.

While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.

From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.

The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:

Designation of KENYA (in an international application or subsequent designation)

– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)

Where the mark is a collective or certification mark

– as above

Renewal of an international registration containing a designation of KENYA:

– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)

Where the mark is a collective or certification mark

– as above

Intellectual Property in Crafts and Visual Arts in Kenya

Craft Afrika Jumpstart Thursday June 2014

This month, CraftAfrika organized a forum for creators and entrepreneurs in the crafts and visual arts sectors to discuss the impact and importance of the intellectual property (IP) system. This blogpost is a review of some of the key IP issues that arose during this important forum.

In today’s digital era, the real challenge for artisans and visual artists is not just to produce and market winning new products that cater to changing consumer tastes, but also to prevent – or if unable to prevent then to effectively deal with – unfair competition or theft of their creative ideas. The intellectual property (IP) system is the best available tool for creating and maintaining exclusivity over creative and innovative output in the marketplace, albeit for a specified maximum period of time. The effective use of IP can also help artisans and visual artists to develop networks and relationships not only with end consumers, but also with all the links in the supply and demand networks.

Overview of IP

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property is divided into two categories: 1) industrial property, which includes patents, trademarks, industrial designs and utility models; and 2) copyright, which includes musical works, literary works such as novels, poems and plays, films, musical compositions; artistic works, such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programmes.

Different Types of IP Protection for Crafts and Visual Arts

kecobo and kipi fees 2013

Before a person or enterprise can take advantage of its intellectual output it has to acquire IP rights (IPRs). IPRs in the fields of industrial property need to be registered in order to be protected. In the case of copyright, registration is voluntary since IPRs under copyright subsist automatically once the work is fixed in material form. Here are the different types of IP protection for Crafts and Visual Arts, in order of priority:

1.Trademark: A brand or trademark is a sign or any combination of signs, capable of distinguishing a product or service from other products or services on the market. The main task of a trademark is to individuate a product or a service – consumers are able to distinguish between different goods with different marks precisely on the basis of the marks. Unlike other types of IP, the term of protection for trademarks is not limited; they can be renewed indefinitely by the owner.
Example: SANDSTORM is a registered trademark used for hand-crafted leather items such as bags. It is registered together with a lizard symbol.

2.Copyright: Basically, copyright gives the owner the exclusive right to use the work. It protects items such as paintings, drawings, sculptures, photographs, architecture, instruction manuals, software, databases, technical documentation, advertisements, maps, literary works, music, films or songs. In most countries, a copyrighted work is protected for the length of the author’s life plus a minimum of another 50 years.

3.Industrial Design: An industrial design (or simply a design) is the appearance of the whole or part of a product resulting from features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Industrial designs, as objects of IP, can usually be protected for up to a maximum of 15 years. The fees indicated in the table above for design registration are the total fees payable to KIPI and not merely the filing fees.

Example: A new textile pattern or the unique shape of a piece of jewellery can be protected as designs.

4.Patent: A patent is an exclusive right granted for an invention, which is a product or a process that provides a new and non-obvious way of doing something, or offers a new and non-obvious technical solution to a problem. A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.

Example: A new method of tatting, using a shuttle, that enables the tatter to use more than two colours or textures of thread has been patented.

5. Utility Model (‘Petty Patent’): A utility model is similar to a patent, but the requirements for acquiring protection are less stringent and the protection is much cheaper to obtain and to maintain. On the other hand, the term of protection offered by a utility model is shorter than a patent i.e. 10 years without the possibility of renewal. The fees indicated in the table above for utility models are the total fees payable to KIPI and not merely the filing fees.

6.Trade secrets: this is confidential business information of any nature that can be used in the operation of a business and that is sufficiently valuable and secret to afford economic advantage over others. To be protected, the owner of a trade secret must have taken reasonable steps to keep the information secret. Therefore it is advised that artisans and visual artists use Non-Disclosure, Non-Compete and Confidentiality agreements and/or clauses in all their dealings with third parties.

Examples: Glass-blowing techniques, oven processing methods for baking pottery, clay mixture preparations for ceramics, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes can all be trade secrets.

Commercialising Intellectual Property Rights

IPRs represent property rights. They can be used by the IPR owner or they can be transferred to others. Artisans and visual artists who own any IPRs can sell their rights to another person. More importantly, IPRs have the particular advantage that they may be exploited simultaneously by several people. This can be done through licensing.

The word licence simply means permission – a person grants permission to another to do something. A licence agreement is a contractual agreement under which a licensor (the person who owns the IP) permits another (licensee) to use the right. It does not transfer the ownership of the IP.

Enforcing Intellectual Property Rights

The main reason for acquiring IP protection is to be able to reap the benefits of the creations. IP assets can only lead to benefits when the acquired IPRs can be enforced; otherwise, infringers and counterfeiters will always take advantage of the absence of effective enforcement mechanisms to benefit from the artisan’s or visual artist’s hard work. It is often the threat of enforcement or the actual enforcement action which allows an IPR to be effectively exploited as a commercial asset.

In the recent dispute between Penny Galore and Amani Women’s Group, Amani was accused of infringing Penny Galore’s rights under both copyright and trade mark law with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. Penny Galore alleged that Amani had substantially copied and/or reproduced the Kura Necklace Grey and that Amani were selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demanded that Amani immediately stop all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed.

In the case of Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. It was found that Safaricom had used artwork belonging to Alternative Media on its 250 Shillings Scratch Cards without Alternative Media’s authority. Therefore the court found that infringement of copyright arose not because the Safaricom’s work resembled Alternative Media’s, but because the Safaricom had copied all or a substantial part of Alternative Media’s work.

The Intellectual Property End-Game

For artisans, craft entrepreneurs and visual artists in Kenya, the IP system should be viewed as a protection and promotion tool that, if used effectively, can enhance business success.

Some important IP considerations include: identification of creative output that may be protected with IP rights, understanding the types of IP rights and protective measures best suited for particular needs and business, consideration of the costs and benefits of IP registrations, maintenance and management of IP assets, detection of IP infringements and enforcement of IP rights.

Intersections between Intellectual Property, Consumer Protection and Competition Law in Kenya

quail

Editor’s note: This article is a commentary on the LSK CLE on Competition and Consumer Law on Feb 8, 2014 at the Hilton, Nairobi. Audio recordings of the various presentations made during the CLE have been uploaded here.

From an intellectual property (IP) perspective, the enactments of the Competition Act, 2010 and the Consumer Protection Act, 2012 have played a major role in balancing the interests of IP owners and IP users in Kenya. The Competition Act is a broad piece of legislation as it seeks to promote and safeguard competition in the economy whilst protecting consumer rights. The Consumer Protection Act was enacted with a view to consolidate various consumer protection provisions scattered in several pieces of legislation. In this regard, the 2012 Act governs the protection of the consumer and aims to prevent unfair trade practices in consumer transactions.

In this discussion of how IP intersects with consumer protection law and competition law, the point of departure is the Constitution of Kenya, 2010. The rights of the various categories of IP rights holders are guaranteed under Article 11, 40 and 69 of the Constitution, whereas the rights of IP rights licensees as users are guaranteed under Article 46 of the Constitution.

However it is important to note that, under Article 24 of the Constitution, none of these rights enshrined in the Bill of Rights are absolute in nature. This Article provides that a right in the Bill of Rights can be limited by law where that limitation is reasonable and justifiable in an open and democratic society, taking into account certain factors relating to the nature, extent, importance and purpose of the limitation.

In this connection, it is submitted that the Competition and Consumer Protection Acts introduce several limitations to the rights of IP owners, discussed below.

In the Competition Act, restrictive trade practices are defined to include any agreement, decision or concerted practice which amounts to the use of an intellectual property in a manner that goes beyond the limits of legal protection. However the Act provides for the grant of exemption for certain restrictive practices in respect of intellectual property rights. This blogger wonder whether de jure monopolies such as collective management organisations would be required to apply and obtain such exemptions.

In addition, the Act defines the abuse of dominant position to include abuse of an intellectual property right. This latter point is discussed by Guserwa, SC at 4:37 in the audio recording below, labelled: “Competition Law Issues in the Legal Profession”.

With regard to the provisions on extra-territorial operation and mergers in the Act, it is important to note the use of the word “asset” which is defined in section 2 as follows:

” “asset” includes any real or personal property, whether tangible or
intangible, intellectual property, goodwill, chose in action, right, licence, cause
of action or claim and any other asset having a commercial value;”

Another important section of the Act is part VI which deals with consumer welfare. This blogger submits that these consumer welfare provisions may have the effect of limiting some of the rights enjoyed by IP owners. These provisions are further enhanced by the Consumer Protection Act. Therefore it is noteworthy that the provisions in the Competition Act relating to false or misleading representations and unconscionable conduct are covered in the provisions relating to unfair practices under the Consumer Protection Act.

From an IP perspective, the consumer law provisions in these two Acts interact with IP at both international and national levels. At the international level, these consumer law provisions give effect to Kenya’s obligations under the Article 10bis of the Paris Convention. These obligations are reinforced by Article 2 of the TRIPs Agreement. At the national level, these consumer law provisions give effect to three IP legislations, namely the Copyright Act, the Trade Marks Act and the Anti-Counterfeit Act. In this context, this blogger argues that the definition of “supplier” in the Consumer Protection Act is broadly defined such that it includes owners of IP rights. Therefore the obligations and duties imposed on suppliers can therefore be extended to IP owners in their normal course of trade.

The Madrid Trade Marks Registration System From A Kenyan Perspective

quail-advanced-regular-strength

Editor’s note: For more on the Quail farming craze in Kenya, see here.

As many are aware, the system of international registration of trademarks facilitates the obtaining of protection for marks (trademarks and service marks) and since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. During KIPI‘s two-day Trade Marks Law and Practice Training Course (featured here), Sudi Wandabusi, this blogger’s friend and trademarks examiner at KIPI devised a great practical scenario on the international registration of trademarks.

For purposes of the scenario, a local manufacturer, Isindu Financial Limited is the owner of the trade mark “Quail Advanced Strength” (TM No. 95229) registered at KIPI on 07-07-2013. Isindu now instructs IPKenya to advise on how its trade mark can be protected in the following territories: Zambia, Italy, U.S.A, Japan and Ireland, where its products are already being marketed and sold by authorised distributors.

Why use the Madrid System?

Since Isindu’s trade mark is present in countries outside Africa, the Madrid System is the obvious choice for registration. This system makes it possible for owners to obtain and maintain registration in a number of countries through a simple and cost effective procedure. Therefore Isindu only needs to file one international application, in one language, and pay one fee, in one currency – no translation, currency exchange, legal fee costs.

Is Kenya a member of the Madrid System?

Kenya joined the Madrid Union in 1998. It brought into force both the Agreement and the Protocol on June 26 1998.
The system is administered by the International Bureau of WIPO. There are a total of 92 contracting parties to the Madrid Union. A full list of members can be found here.

Is Isindu eligible to use the system?

Any natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol can use the system.

Therefore Isindu’s entitlement to file the international registration would be that it has a a real and effective industrial or commercial establishment in the territory of the Kenya.

Can Isindu claim priority?

From the scenario above, it is stated that TM No. 95229 was registered at KIPI on 07-07-2013. An applicant can claim priority
when filing within six months of the date of an earlier filing.
Therefore, Isindu is still within time as at the date of this blogpost and can claim priority.

How much does it cost?

The international registration fees payable to the International Bureau are available online here. This page also has a ‘fee calculator’ which is very helpful in establishing exactly how much is to be paid. The standard fee is CHF 903 for coloured marks and CHF 653 for black and white with a complementary fee of CHF 100. In addition, there is a handling fee of KES 1000 or USD 13 payable to KIPI.

How do the applicants or agents interact with the Bureau?

Several online services have been introduced by the International Bureau. They enable faster, easier communication between the applicant/agent and the bureau, namely:

1) Madrid Goods & Services Manager is a nifty tool that assists TM applicants/agents in compiling their lists of goods and services to file national and international applications. It is available in several languages and helps avoid irregularities in filing. The tool is indispensable as it enables one see which terms are acceptable by International Bureau and different designated contracting parties

2) Madrid Real–time Status (MRS) is a stand-alone tool that provides the status in real time of trademark documents being processed by WIPO. It enables applicant/agent to see what’s happening to their request at any point in time.

3) Madrid Electronic Alert (MEA) is a free ‘watch service’ that informs anyone interested in monitoring registration status of international marks. It is a subscription-based daily e-mail alert system that alerts when changes are recorded in the International TM register.

4) Madrid Portfolio Manager (MPM) is a web service that allows holder of international registrations and there reps access their international trademark portfolios. It comes in handy when submitting new requests for recordal in WIPO international TM Registry.

Comments:

This blogger notes that despite the fact that Kenya is signatory to the Madrid Union, other neighbouring countries within the East African Community (EAC) are not members, with the exception of Rwanda. Within the African continent, less that 11 countries are members of the Madrid system. It has been argued that the reason for the low number of signatories is that the Madrid system is not attractive to African states. It is indeed noteworthy that the larger economies in Africa are not members of Madrid, including South Africa, Egypt and Nigeria. The strongest resistance has come from trade mark practitioners who have lobbied against this system arguing that they stand to lose revenue (agent fees) under the Madrid system.

In contrast, the national trade marks office, KIPI, would prefer the Madrid System as it provides an extra source of revenue. The 35% revenue sharing provision under Madrid almost guarantees the member states an extra added income of CHF 10, 000 and this sum could be higher depending on the designation. KIPI receives an average of CHF 300,000 annually through the Madrid System, whereas a country such as Botswana receives an average of CHF 500,000 annually.

For information on the Madrid System, check out the WIPO website here and WIPO also has a database of all trade marks registered under the Madrid System available here.

 

 

The Past Decade: Kenya’s Copyright Office Turns 10 Years Old This Month

Kenya Copyright Board KECOBO

On the 21st July 2003, the then Honourable Attorney General of the Republic of Kenya, S. Amos Wako, SC officially launched the Kenya Copyright Board (KECOBO) at the State Law Office in Nairobi. In his speech, he expressed optimism that the launch of KECOBO marked the beginning of a new era for the copyright industry in Kenya. This optimism was of course tempered by his acceptance that there continued to exist numerous challenges in the copyright industry with adverse effects on copyright owners countrywide.

The first challenge cited was the issue of piracy. It was noted that piracy has resulted in several prominent recording artistes and performers dying poor while their music dominates the airwaves both locally and internationally. In addition, it was noted that piracy resulted in wood carvers and other finer artists having their works misappropriated and sold overseas at abnormal profits with no compensation to these original creators. Furthermore, local authors and book publishers found it difficult to keep afloat as there was an influx of pirated books manufactured in the back streets of Nairobi and elsewhere throughout the country. At the time of KECOBO’s launch, software piracy levels were at 78%, which was considered a serious issue not only because Kenya was losing billions in unpaid taxes but because of the link between piracy and other international crime such as drug trafficking and illegal trade in firearms.

With regard to this challenge of fighting piracy, it was recognised that KECOBO joins a growing list of enforcement agencies such as the Customs Department of the Kenya Revenue Authority, the Kenya Police, the Weights and Measures Department of the Kenya Bureau of Standards who were all on the spot for their lack of efficiency and effectiveness with regards to curbing copyright piracy.

In the case of KECOBO, it was noted that prior to 2003, the Copyright Office was a small section within the Department of the Registrar General and lacked personnel and other resources to ensure the proper administration of copyright and related rights through public awareness campaigns and training of key agencies and other enforcement bodies.

Connected to the challenge of fighting piracy was the issue of the administration of the Anti-Piracy Security Device (APSD) introduced in the 2001 Copyright Act which replaced the previous Act, CAP 130 of the Laws of Kenya. The APSD would be affixed to all genuine audio and audio-visual works in Kenya and would serve as an identification of legitimate works. The administration of the APSD would also facilitate a comprehensive database of all copyright works in Kenya that would be used both by the Government and the stakeholders in the copyright industry.

Another herculean challenge cited during KECOBO’s launch was the organisation of the music industry in Kenya, which was riddled with disagreements and controversies. It was noted that although the Music Copyright Society of Kenya (MCSK) had been in existence for the past 24 years as the sole collecting society, the latter was characterised by constant wrangles and non-payment of royalties. Therefore at KECOBO’s launch, it was stated that the Board must exercise its function of licensing and supervising the activities of collecting societies in order to intervene and put the music industry in order.

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

A Challenge for Law Schools in Kenya to Take IP Seriously

IPKenya would like to begin by echoing Article 40 (6) of the Constitution of Kenya which states:

“The State shall support, promote and protect of the intellectual property rights of the people of Kenya”

This post is a call for a different interpretation of this article that puts us, intellectual property scholars and students, at the heart of it’s implementation.

It’s no secret that “the State” (in this case, our IP offices and other government agencies that deal in IP-related areas) is over-stretched, under-funded and ill-equipped as it takes on the daunting task of addressing all the issues faced in the changing world of Intellectual Property and relate these to the needs of society, IP holders and consumers.

Attend any forum, workshop or meeting in Kenya where IP is discussed and you will notice how every participant is quick to blame the IP Offices for piracy and counterfeiting due to what they term as “poor” policing and enforcement of IP rights within the country. While this may be true in principle, we conveniently choose to ignore the reality facing these IP Offices. The public servants working in the IP offices are never more than 100 in number and yet they are expected to serve a country of close to 50 million inhabitants. These public servants are required to attend to the day-to-day administration of the secretariat; receive complaints; carry out investigations; conduct raids; make arrests; prosecute cases in court; conduct awareness campaigns, training workshops, forums and seminars; liaise with government stakeholders and private entities, examine/verify applications for IP registration or filing; give IP advice to members of the public; assist members of the public in preparing certain applications for IP registration/filing; periodically review existing IP laws to ensure they are in up to date and relevant to changing times; register/file IP applications; deal with IP-related correspondences from members of the public; attend all local, regional and international conferences on IP; represent Kenya in high-level negotiations and formulation of IP instruments and policies, among many more.

Isn’t it high time we took some of this load of our IP Offices’ shoulders? Isn’t it time we stepped up and joined in since we all share the same desire for a balanced development of intellectual property law and policy in Kenya? Instead of always whining that the IP Offices are not doing enough to reduce piracy and fight counterfeiting, why not be part of the solution for a change?

The challenge before us is to find ways of supporting, promoting and protecting IP in Kenya. IPKenya believes that our law schools are a good place to start.

SUPPORT OF IP: Primarily through sustained scholarship, research, teaching and training in all areas of IP.

PROMOTION OF IP: Creating IP awareness and furthering the application and development of IP law in a wide variety of fields including business, science, engineering, commerce, law, banking, entrepreneurship and the arts.

PROTECTION OF IP: Ensuring that the development of IP laws and policy both domestically, regionally and internationally are in Kenya’s best interests.

In an ideal situation, IPKenya argues that IP Offices’ responsibilities should primarily be administration and enforcement of the various IP laws and policies in Kenya. However, IP Offices currently find themselves taking on more and more roles and are too thinly spread in as far as addressing their key statutory mandates. Hence the need for our law schools to rise to the occasion and assist IP Offices and the government as a whole so as to play a more meaningful role in the support, promotion and protection of the IP of the people of Kenya.

In this regard, IPKenya urges Kenyan law schools to borrow a leaf from our neighbours in South Africa:

University of Cape Town (UCT), Faculty of Law, Intellectual Property Law and Policy Research Unit:

 

Stellenbosch University (SU), Faculty of Law, Anton Mostert Chair of Intellectual Property:

 

Dear readers, what are your thoughts on this?