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

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.

Cautious Support for Anti-Counterfeit Agency Amidst Public Concerns

This blogger has come across the recently published Gazette Notice No. 6612 in which the Chairman of the Anti-Counterfeit Agency (ACA) has appointed 31 persons to be inspectors for the purposes of the enforcement of the provisions of the Anti-Counterfeit Act. Several commentators have raised several serious concerns about ethnic and regional balancing in the appointments although there is no news of any legal or constitutionality challenges filed to challenge the appointments.

Anti-Counterfeit Agency Cleaning House, Dragged to Labour Court

Readers of this blog will recall a previous report here that the Anti-Counterfeit Agency (ACA) reinvigorated under the chairmanship of Polycarp Igathe took the unprecedented step of sending four of its senior officers on compulsory leave following numerous complaints from manufacturers, specifically, owners of intellectual property (IP) rights, against the officers who are allegedly engaged in misconduct and defeating the very purpose for which they were engaged in combating counterfeiting. The ACA officers sent on compulsory leave included; Deputy Director for Enforcement, Prosecution and Legal Services Mr. Johnson Adera, Assistant Director for Enforcement Mr. Abdikadir Mohamed, Anti-Counterfeit Inspector II Mr. Weldon Kiprotich Sigei and Anti-Counterfeit Inspector I, Mr. Sammy Arekai Sarich.

High Court Dismisses Judicial Review Application in “ZERO B” Trade Mark Dispute

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti-Counterfeit Agency & 2 others Ex parte Surgippharm Limited [2015] eKLR. A copy of the judgment is available here. In this case previously highlighted here, Surgipharm Limited went to the High Court seeking judicial review orders to prohibit the Anti-Counterfeit Agency (ACA) from carrying out its enforcement mandates under the Anti-Counterfeit Act. Following a complaint against by Wiskam against Surgippharm, the Chief Magistrate’s Court, Nairobi granted ACA a warrant of entry, search and seizure was issued against Surgippharm with regard to the alleged counterfeiting activity.

While Surgippharm admits that Wiskam is the registered holder of the “ZERO -B” trademark in Kenya, Wiskam failed to disclose to ACA and the Magistrates’ Courts that Surgippharm had initiated proceedings for the expungement of the mark with the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Surgippharm also alleges that Wiskam also failed to disclose that had already commenced proceedings in the high court of Kenya seeking, inter alia, for an injunction order and an award of damages against Surgippharm, being HCCC NO. 542 of 2011.

Platinum Distillers (Kenya) Denies “Guarana” Trade Mark Infringement Claim by Diageo North America Inc

Recently, this blogger came across a media report stating that Diageo North America Inc, suing jointly with UDV (Kenya) Ltd, which is its subsidiary in Kenya, has claimed that Platinum Distillers Ltd has begun the manufacture and sale of an alcoholic drink in Kenya known as Momentum Ice with Guarana, which is directly infringing on its trademark, Smirnoff Ice Double Black with Guarana. Both alcoholic beverages are pictured above.

According to this media report, the US company claims that Platinum has caused Momentum Ice to be produced with an overall packaging that constitutes confusingly similar features to its Smirnoff Ice Double Black with Guarana, which is distributed in Kenya by UDV. In particular, the report has reproduced a portion of the suit papers filed by Diageo which reads: “This [packaging] has been done in a manner and style calculated to deceive members of the public that the offending product is associated with us.” As result, Diageo and UDV have reportedly asked the courts to stop Platinum from using its trademark by way of packaging and selling of Momentum Ice with Guarana, in order to prevent further confusion among consumers who think the two products are connected.

Judicial Review of Anti-Counterfeit Seizures: High Court Judgment in the ‘Omega Dustless Chalk’ Case

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti Counterfeit Agency & 3 others Ex-parte Omega Chalk Industries (1993) Limited & another [2015] eKLR. Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited (“the applicants”) sought orders orders of prohibition, certiorari and mandamus against the Anti-Counterfeit Agency (ACA) with respect to seizures made of goods bearing the alleged infringing mark ‘Omega Dustless Chalk’ registered by Omega School Boards and Accessories Limited (“the interested party”). The court dismissed the application in its entirety rightly noting that section 25(3) of the Anti-Counterfeit Act provides an “alternative remedy which is more convenient and appropriate for the resolution of the issues” raised by the applicants relating to the alleged wrongfulness of the seizure by ACA.

A copy of the judgment is available here.

In the judgment, the court held that the “court of competent jurisdiction” referred to under section 25 of the Act cannot be a “judicial review court” since the court “is not the court empowered to deal with merits” and that such a court “would not be entitled to quash a decision made” by a court “merely on such grounds as the decision being against the weight of evidence” or that the court “in arriving at its decision misconstrued the law” or that the court “believed one set of evidence as against another” or that the court has “ignored the evidence favourable to the applicant while believing the evidence not favourable to him”.

Some IP enthusiasts will recall the ruling of the Registrar of Trade Marks In the Matter of Trade Mark No. KE/T/2008/63557 “OMEGA SCHOOL BOARDS AND ACCESSORIES” (WORDS and DEVICES) in Class 16 in the Name of Omega School Boards and Accessories Limited and Expungement Proceedings Thereto by Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited delivered on August 28, 2013 where it found that the interested party as above had a valid and legal claim to the mark “OMEGA SCHOOL BOARDS AND ACCESSORIES” before applying to register the same in accordance with the provisions of section 20(1) of the Trade Marks Act. Furthermore the Registrar found that the applicants as above did not qualify as aggrieved persons in accordance with the provisions of section 35 of the Trade Marks Act. Therefore the Registrar dismissed the application for expungement of the interested party’s mark by the applicants.

President Assents to Anti-Counterfeit (Amendment) Act 2014

This blogger has received official confirmation that the Statute Law (Miscellaneous Amendments) Bill, 2014 passed by the National Assembly on 13/08/2014, was assented to by the President of the Republic on 28/11/2014 thereby bringing the Anti-Counterfeit (Amendment) Act 2014 into force. The Bill has effectively amended four sections of the Anti-Counterfeit Act, namely sections 2, 6, 16 and 34. A copy of the Bill is available here.

The Bill’s Memorandum of Objects and Reasons explains that the Anti-Counterfeit Act has been amended to “provide for the establishment of the Board to manage the Anti-Counterfeit Agency. It [The Bill] also establishes an Intellectual Property Enforcement and Co-ordination Advisory Committee. It [The Bill] also introduces a new provision empowering the Executive Director to compound offences committed under the Act.”

What follows is this blogger’s take on the recent amendments to the Act.

Section 2

This is an amendment by deletion. The words “or elsewhere” have been deleted in the definition of “counterfeiting” under the Act. The spirit behind this amendment appears to be based on the principle of territoriality in intellectual property law.

Unlike Kenya Copyright Board (KECOBO), the Anti-Counterfeit Agency (ACA) appears to have facilitated public participation and stakeholders’ consultations in the drafting of these proposed amendments. For instance, the ACA organised a Stakeholders’ Meeting on September 25, 2013 to deliberate on changes to the Anti-Counterfeit Act. However, health activists voiced their disappointment with the outcome of the meeting (See here) which later morphed into a full blown social media campaign dubbed #TellACABoss (See here).

Therefore this blogger reckons that the health activists will be disappointed once more with the amendment to section 2. The health activists have consistently maintained that the definition of counterfeiting under the Act creates ambiguity between ‘generic’ and ‘counterfeit’ medicines thereby threatening access to affordable and essential generic medicines. They hold that this definition in section 2 goes beyond what is legally required under the World Trade Organization Trade Related Aspects of Intellectual Property Rights (TRIPs), which Kenya has already domesticated into law. The activists have been emboldened in their calls for amendments to the Act by the landmark judgment in the case of Patricia Asero Ochieng and 2 Ors v The Attorney General. In this case, the judge held, inter alia, that:

“It is incumbent on the state to reconsider the provisions of section 2 of the Anti-Counterfeit Act alongside its constitutional obligation to ensure that its citizens have access to the highest attainable standard of health and make appropriate amendments to ensure that the rights of petitioners and others dependent on generic medicines are not put in jeopardy (…)”

Section 6(1)

This is an amendment by deletion and substitution. The new section is intended to set out the composition of the ACA Board of Directors. This amendment principally aims at reducing the size of the ACA Board and setting the minimum qualifications for private sector appointees to the ACA Board. Any private sector appointee is required to have at least one degree from a university recognised in Kenya and at least ten (10) years’ experience in matters relating to either intellectual property (IP) rights, consumer protection or trade.

The lean ACA Board will no longer include the heads or representatives from the Ministry of Trade, KECOBO, the Office of the Attorney General, Kenya Industrial Property Institute (KIPI), Kenya Plant Health Inspectorate Services (KEPHIS) and the Pharmacy and Poisons Board.

This blogger is in full support of these amendments as it promotes professionalism and good governance. The other IP agencies, KECOBO and KIPI, would be well advised to emulate ACA’s example with similar amendments to the Copyright Act and Industrial Property Act respectively.

Section 16(4)

This is an amendment by addition. Section 16(4) establishes a special committee known as the Intellectual Property Enforcement and Co-ordination Advisory Committee (IPECAC). IPECAC will be comprised of fifteen (15) members namely the Cabinet Secretary for Industrialization and Enterprise Development who will be the chair and fourteen members drawn from various state agencies involved in protection and enforcement of IP rights.

The spirit of this amendment is praise-worthy. However, this blogger is of the view that a committee of 15 members may be slightly bloated. Ideally, the members of IPECAC should be no more than nine (9) in number, with the bulk of the members coming from the various state agencies to be removed from ACA’s Board under the proposed amendment to section 6(1).

Section 34A

This is an amendment by insertion. The new section empowers the ACA Executive Director to act as judge, jury and executioner with respect to all offences committed under the Act. These powers allow the Executive Director to order the payment of a fine or forfeiture. However the Executive Director can only exercise these powers where the person who has committed the offence(s), admits in the prescribed form that s/he has committed the offence(s) and requests the Executive Director to deal with such offence under this new section.

This is a very positive amendment to the Act and is both constitutionally and logically sound. This section will allow ACA to dispose of criminal cases efficiently and expeditiously while expending significantly less time and energy. Once again, KECOBO would do well to borrow a leaf from ACA in this regard when making necessary amendments to section 38 of the Copyright Act.

This blogger will be keenly following the implementation of these amendments and the impact of these amendments on the anti-counterfeiting matters in Kenya.

2013 Year in Review: Intellectual Property in Kenya

2013 was an election year for Kenya which resulted in the swearing in of Uhuru Kenyatta as the fourth President of the Republic. Kenyatta has been very supportive of the creative economy and has on several occasions reiterated his administration’s commitment to creating a conducive environment for creators to reap from their intellectual property (IP) assets. However, Kenyatta’s mark on IP this year was the decision to reform all state corporations and parastatals in Kenya which has set in motion plans to merge the copyright office, the industrial property office and the anti-counterfeit agency into one national IP office.

Copyright and Related Rights

In 2013, copyright news was monopolized by Safaricom which was embroiled with two high profile copyright cases with Faulu Kenya and JB Maina. Another popular copyright story was Longhorn’s acquisition of publishing rights for iconic educational textbooks writer, Malkiat Singh.

The year was also memorable for Kenya as she successfully negotiated and signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are BIlind, Visually Impaired or Otherwise Print Disabled.

Industrial Property

In 2013, trade marks stole the show with several far reaching rulings by the Registrar of Trademarks as well as the landmark acquisition of a local trademark by a multinational cosmetics company. In addition, trademark administration has continued to be the major revenue earner for the national IP office, Kenya Industrial Property Institute (KIPI) especially through the Madrid System.

The Red Bull case (available online) was an important decision in that it expanded the Kenyan IP jurisprudence in respect of the doctrines of “conceptual similarity” and “well-known marks”.

In the Basmati case, a clear distinction was drawn between trade marks and geographical indications within the context of Kenya’s international obligations under the World Trade Organisation (WTO) Agreement on Trade Related Aspects of IP (TRIPs) adopted in section 40A of the Kenya Trademarks Act.

In the Pyrex case (available online), the Registrar found that the withdrawal of a threat of opposition does not amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark. This ruling was important because it provides a practical application of two amended provisions of the Act, namely Section 36A and 36B of the Act.

Later in the year, one of the largest cosmetics companies in the world, L’Oréal fully acquired the health and beauty divisions of local firm, Interconsumer Products Ltd, makers of Nice & Lovely brands, in a multi-billion shilling transaction. This acquisition is seen as part of L’Oreal’s push to dominate the East Africa’s low-end cosmetic market.

Legislative Developments

As previously discussed here, several amendments have been proposed to the Copyright and the Anti Counterfeit Acts in the Statute Law Miscellaneous Bill currently before Parliament is passed. Earlier this year, a proposed draft law on the protection of traditional knowledge and traditional cultural expressions was validated.

This year saw the enactment of the Science, Technology and Innovation Act, Consumer Protection Act, Media Council of Kenya Act and Kenya Information and Communication Amendment Act, all of which will affect IP administration and enforcement both directly and indirectly.

For more stories from 2013, check out the IPKenya archive on the right hand side of this page and information from other sites on our twitter feed.

See you all in 2014!

Proposed Intellectual Property Law Amendments: Kenya Anti-Counterfeit Act

In an earlier blogpost here, this blogger discussed proposed amendments to the Copyright Act introduced through the Statute Law (Miscellaneous Amendments) Bill, 2013 published in Kenya Gazette Supplement No. 146 (Bills No. 32). In similar fashion, this Bill also seeks to amend four sections of the Anti-Counterfeit Act, namely sections 2, 6, 16 and 34. A copy of this Bill is available here (See pages 933-936).

Read the rest of this article here.

On the Proposed Parastatal Merger of the Copyright Board, Industrial Property Institute and Anti-Counterfeit Agency

The Daily Nation reports that a special taskforce appointed by the President to streamline the operations of state corporations has proposed that KECOBO, KIPI and ACA be merged to form a single state corporation christened: “Kenya Intellectual and Industrial Property Corporation”. Before commenting on this proposed merger of intellectual property (IP) parastatals, we must put into context the full scope of the proposals by the Abdikadir-led taskforce.

At the heart of the taskforce’s proposals is that all parastatals be categorised into two, namely, state corporations and state agencies. It is proposed that power and oversight of these corporations and agencies be moved from “parent ministries” to two new entities, namely, Government Investment Corporation (GIC) and the National and County Agencies Oversight Office (NACAAO). As their names suggest, GIC and NACAAO will regulate state corporations and state agencies respectively. All regulatory authorities, public universities and research institutions will be classified as state agencies while all commercially-oriented institutions where the government controls more than 50 per cent shareholding will be categorised as state corporations.

Comment:

At present, there are two “parent ministries” in charge of IP in Kenya namely, the Ministry of Industrialisation and Enterprise Development which is in charge of KIPI and ACA and the Office of the Attorney General which is in charge of KECOBO. These three IP parastatals administer four IP laws namely, the Industrial Property Act, the Trademarks Act, the Anti-Counterfeiting Act and the Copyright Act. In addition, these parastatals administer several ratified international instruments on IP including the Paris and Berne Conventions, TRIPS Agreement and a host of other regional and international IP-related treaties and protocols.

From the outset, this blogger is in full support of the move to have one state corporation dealing with all the administration and enforcement of all the branches of IP in Kenya. Among the benefits of this merger would be better service delivery to Kenya especially enforcement of IP rights and awareness creation as well as the promotion of creativity and innovation among Kenyans. In the case of IP enforcement, ACA has been at the forefront of conceptualising and implementing an “inter-agency approach to IP protection and enforcement” along with KRA, KEBS, KIPI, KEPHIS and KECOBO, among other public and private partners. In this regard, the discussion has centred mainly on ACA’s empowering legislation the Anti-Counterfeiting Act 2008 which provides ACA with broad enforcement powers with relation to both copyright and trademark infringements.

In addition, this merger appears to have taken into account several constitutional factors. First and foremost, Articles 11, 40 and 60 all impose an obligation on the State to support, protect and promote the IP rights of the people of Kenya Secondly, under the proposed parastatal structure, the President as the Head of the National Government shall the chair and board of the GIC, who shall in turn appoint appoint chairpersons and directors of all state corporations in Kenya. This is in line with the fourth schedule of the Constitution, which lists intellectual property among the functions of the national government.

However the proposed merger as it stands is problematic for two reasons. Firstly the name itself appears to be misinformed. By definition, “intellectual property” includes “industrial property” therefore there is no need to refer to the entity as “intellectual and industrial property corporation” is unnecessary. This blogger submits that the name “Kenya IP Corporation” would be more appropriate and sufficiently descriptive for all to understand.

The second problem with this proposed merger is that it leaves out plant breeders’ rights (PBRs). In fact, the taskforce proposes that the Kenya Plant Health Inspectorate Services (KEPHIS) which administers PBRs in Kenya should merge with the National Biosafety Authority. The crucial question to be asked in this regard is: Are PBRs recognised in Kenya as a branch of IP? During this blogger’s LLM studies, two leading IP professors offered two divergent answers to this question with Ben Sihanya saying “No” while James Otieno-Odek saying “Yes”. This blogger is swayed by the latter answer by Prof. Otieno-Odek, who has since left academia and currently serves as Judge of the Court of Appeal. According to Odek, industrial property was the first recognized category of intellectual property in 1893, followed by copyright in 1895 and Plant Breeders Rights in 1961. Odek explains that all these categories have been given legal recognition under the WTO TRIPS agreement. Odek states that Kenya was the first country in Africa to domesticate the UPOV Convention through the Seeds and Plant Variety Act Chapter 426 Laws of Kenya, which is modeled on UPOV 1961.

Politics and power play aside, this blogger is convinced that the merger would be good for IP in Kenya, especially if KEPHIS is included alongside KIPI, ACA and KECOBO. Let us wait and see whether the taskforce proposals will be adopted by the Executive and Legislative arms of government.