‘Fire in the Sky’ (pictured above) is a stunning photograph of Nairobi’s skyline lit up against the backdrop of New Years’ fireworks. In April 2018, this work by Reinhard Mue aka Rey Matata was unlawfully copied and used by Law Society of Kenya (LSK). In June 2018, Reinhard wrote to LSK complaining about infringement of the rights to his copyright work and threatened to take legal action. To-date, LSK and its elected leaders have failed to respond to Reinhard at all, either formally or otherwise. As a member of LSK, this blogger is disappointed that the LSK leadership has allowed such a straight-forward matter to become a public spectacle.
Recent media reports indicate that Sony Corporation has filed an appeal in the High Court against the decision of the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI) allowing the registration of two trade marks namely “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS).
Given the high likelihood that the High Court may defer to the expert determination of the Trade Mark Registrar, this blogpost considers the ruling made by the Registrar in the opposition proceedings with the costs totaling about Kshs 1,252,400.00 awarded to Sony Holdings.
This blogger recently received the following communication from the Law Society of Kenya (LSK):
The Council of Law Society of Kenya wishes to draw the attention of members to the provisions of paragraph 4 of The Advocates (Remuneration) (Amendment) Order 2014 which provides as follows:-
“4. An Advocate shall not agree or accept his remuneration at less than provided for by this Order.”
It has come to the attention of the Council that some law firms and advocates are undercutting by charging less than what is provided for under the order.
We are in the process of investigating the various complaints. Any member involved should know that this amounts to professional misconduct.
APOLLO MBOYA, HSC
As many may know, the Advocates Act empowers the Chief Justice and President of the Supreme Court to make orders relating to the remuneration of Advocates for both contentious and non-contentious work. This section is the basis for the Advocates Remuneration Order which sets the minimum charges that an Advocate may charge for services. The Order was recently amended through Legal Notice No. 35 dated April 11, 2014. Curiously, LSK have not uploaded a copy of the Advocates (Remuneration) (Amendment) Order 2014 on their official website available here. However a copy of the Order is available on the Kenya Law website available here.
From an intellectual property (IP) perspective, Schedules 4 and 12 of the Order deal with Trade Marks and Patents, Designs and Utility Models respectively.
For instance, with regard to trade marks, the Order provides that an advocate must not charge less than Kshs. 7,500 for “taking instructions to advise on registrability of a mark or on a point of law or practice”. In a previous post here, we discussed the heightened competition among Kenyan firms with regard to trade mark practice, particularly in light of the recent 2015 WTR1000 rankings. However, this blogger submits that the fee of Kshs. 7,500 is already too low for any of the IP law firms and advocates to be engaged in undercutting. This reasoning may easily apply to other types of trade mark work such as applications, registrations, assignments etc.
With regard to patents, designs and utility models, the Order provides that an advocate must not charge less than Kshs. 25,000 to advise on patentability of an invention or registrability of an industrial design or a utility model or on a point of law or practice. This blogger submits that given the complexity of this area of industrial property work and the duration it generally takes to complete such work, it highly unlikely that any advocate or law firm would consider undercutting. However, the increased awareness among Kenyan inventors and innovators on the need to protect their industrial property may be an important factor fueling undercutting.
This blogger invites readers to share freely their views and experiences with how advocates and law firms charge for intellectual property legal services in Kenya.
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
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.
Marco Van de Merwe, Spoor & Fisher (South Africa)
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.