CMOs Behaving Badly: Kenya Featured Alongside EU and US Copyright Collecting Societies

UKIPO-Copyright-Law-iplogium-1

The raison d’etre of  the collective administration or collective management system in copyright law is to bridge the gap between rights holders and users of copyright works. So, what happens when collecting societies, or as they are commonly called collective management organisations (CMOs), fail to carry out this core function and instead become poster children for corruption, mismanagement, lack of transparency, and abuse of power?

Back in 2013, Jonathan Band and Brandon Butler published an insightful article titled ‘Some Cautionary Tales About Collective Licensing’ which exposed the dark side of CMOs around the world. This blogger was pleased that some of our work in the context of CMOs in Kenya was featured in the article, specifically the on-going wrangles between Music Copyright Society of Kenya (MCSK) and literally everyone else including the copyright regulator, copyright owners, copyright users and even other Kenyan CMOs in the music industry.

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2018 Proposed Amendment to The Copyright Act

2018 Amendments to Copyright Act Kenya KECOBO Bill

The Statute Law (Miscellaneous Amendments) Bill, 2018 seeks to make various, wide-ranging amendments to existing intellectual property (IP) law-related statutes. The Bill contains proposed amendments to the following pieces of legislation: The Industrial Property Act, 2001 (No. 3 of 2001), The Copyright Act, 2001 (No. 12 of 2001), The Anti-Counterfeit Act, 2008 (No. 13 of 2008) and The Protection of Traditional Knowledge and Cultural Expressions Act, 2016 (No. 33 of 2016). The Memorandum of Objects and Reasons for the Bill is signed by Hon. Aden Duale, Leader of Majority in the National Assembly and it is dated 29 March 2018. This blogpost will focus on the changes proposed to The Copyright Act.

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High Court Declares Appointment of Anti-Counterfeit Agency Inspectors Unconstitutional

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“In my view fresh appointments to the positions of inspectors must be open to the public and such positions must be advertised. It therefore does not matter whether the interested parties were handpicked by the Board or Mr Igathe [Former Chairman of ACA Board of Directors]. The era of handpicking persons and appointing them as public officers was in my view buried with the retired Constitution and has no place in the current constitutional dispensation.” – Odunga J at para. 39.

In a recent judgment in the case of Republic v Anti-Counterfeit Agency Ex parte Moses Maina Maturu [2016] eKLR, the High Court quashed Gazette Notice No. 9451 published on 24th December, 2015 appointing several individuals (enjoined in the suit as interested parties) as inspectors of Anti-Counterfeit Agency (ACA). According to ACA, the present suit was a scheme to paralyze its operations instigated by persons who have been behind several court cases, which ACA has been forced to defend thereby directing its resources away from the fight against counterfeiting.

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Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

1 kosgei kipi 2010

2 kosgei kipi 2010

3 kosgei kipi 2010

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

4 kosgei kipi 2010

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

Description PDF Word
TM 1 Form of authorization of agent Tm1 Tm1
TM 2 Application for Registration of a mark Tm2 Tm2
Tm6 Notice of Opposition of Application Form Tm6 Form Tm6
TM 10 Application for Renewal of mark Tm10 Tm10
Tm10a Certificate of registration of trademark Form10a Form10a
Tm14 Request to register Assignment or transmission Tm14 Tm14
Tm17 Request to alter Trade or Business Address in the register Tm17 Tm17
Tm19 Application to correct Clerical error in register or to ament document, etc. Tm19 Tm19
Tm20 Application to change name or description in the register Tm20 Tm20
Tm 21 Application to surrender Trade Mark fro all Goods and Services Tm 21 Tm 21
Tm22 Application to surrender Trade Mark for some Goods and Services Tm22 Tm22
Tm23 Application to ender disclaimer or memorandum in Register Tm23 Tm23
Tm24 Application to add to or alter registered Trade mark Tm24 Tm24
Tm25 Application for the Marking ,Expunging or varying of an entry in the register Tm25 Tm25
Tm26 Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register Tm26 Tm26
TM 27 Application for search under rule 114/Application for preliminary advice as to distinctiveness. TM 27 TM 27
Tm30 Request for certificate other than under section 22 of the act Tm30 Tm30
TM 32 Application to enter or alter address for service TM 32 TM 32
Tm34 Application for alteration of deposited regulations relating to certification of trademark Tm34 Tm34
Tm43 Application to adapt Classification so that it is in accordance with section 6(2) of the act Tm43

 

Tm44

 

 

TM 48

Notice of opposition to application to have classification adapted

Application for registration of registered user.

Tm44
Tm48
 

Tm44

 

 

Tm53 Application for extension of Time Tm53 Tm53
Tm54 Order form for copy of document Tm54 Tm54
Tm55 Application to add goods or services to a Trade Mark or an Application Tm55 Tm55

 

International Registration of Kenyan Trade Marks

quail-advanced-regular-strength

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.