Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya

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At first glance, most observers would contend that Kaplan & Stratton (K&S) Advocates has established itself as the premier IP law firm in Kenya. This may seem like quite a remarkable feat but as most IP enthusiasts already know, K&S is one of the oldest (1927) and most established (16 partners) law firms in the country with one of its partners possessing over 40 years experience in IP practice. So, by all means, K&S is a giant however this blogger submits that this giant is slowly fading in comparison to the numerous new and not-so-new law firms in Kenya that are actively engaged in substantial IP related work.

This blogpost aims to consider the performance of eleven Kenyan law firms known to have established IP practices, namely Kaplan & Stratton Advocates (K & S), Hamilton Harrison and Mathews Oraro Advocates (HHM Oraro), Iseme Kamau & Maema Advocates (IKM), Ndungu Njoroge & Kwach Advocates (NNK), Coulson Harney Advocates (CH), Daly & Figgis Advocates (D&F), Gichachi & Company Advocates (G & C), Simba & Simba Advocates (SS), J.K Muchae & Company Advocates (JKM), CFL Advocates (CFL) and Muriu Mungai & Company Advocates (MMC).

In considering the performance of IP firms in Kenya, this blogger considered relevant information from several sources including, the Law Society of Kenya (LSK), the Kenya Industrial Property Institute (KIPI) and the Kenya Law Reports (eKLR), among others. This blogpost aims to explain why K&S’s erstwhile lion’s share of influence in IP work is gradually being eroded due to two main reasons, firstly increased competition among existing law firms in IP practice and secondly, the emergence of new firms with offering considerable expertise in IP practice.

From the outset, it is important to state that IP law remains a niche area of practice in Kenya. According to LSK’s online search engine, there are only 22 Advocates out of a total number of 7264 that spend a minimum of 55% of their time dedicated to IP practice. This search of Advocates by specialisation can be done at LSK’s page here.

Similarly, KIPI has its own list of Advocates, namely those who have been admitted to practice before the Industrial Property Tribunal and the Registrar of Trade Marks. The current list is available here from KIPI’s website. KIPI has registered about 340 patent agents. With a population in Kenya of roughly 43,000,000, and now assuming that all patent agents are “active”, that equates to about 1 patent agent for every 126,000 people.

With regard to patent and trade mark prosecutions, this blogger randomly sampled four publications (January 2014, March 2014, June 2014 and September 2014) of the Industrial Property Journal, which is the official Journal of Patents, Industrial Designs, Utility Models and Trade marks published by KIPI. Since each of the publications mentions the specific law firms acting as agents with respect to the various trade mark, patent and industrial design prosecutions, this blogger counted the number of times each of the eleven firms was mentioned. The results have been presented in the pie-charts below:

IP Kenya Survey 2 TM

IP Kenya Survey 2 PAT

IP Kenya Survey 2 ID

The first thing that the crunchy pie-chart numbers demonstrate is that CH appears to have overtaken K&S as the leading firm in trade mark prosecutions. In this regard, this blogger recalls the on-going partnership dispute between CH’s IP Partner and MMC Africa, which may have a significant impact on CH’s future IP practice. Secondly, the competition appears to be heating up between several indigenous firms namely G&C, CFL, MMC Africa, NNK and JKM.

Thirdly, the merger of HHM Advocates and Oraro & Company Advocates to form the law firm HHM Oraro Advocates is a significant boost to HHM’s standing as an IP firm. This blogger has previously discussed here the HHM Oraro merger and its possible effects on IP practice. HHM Oraro’s star litigator, Kiragu Kimani continues to impress in contentious IP work, see for instance the Bata case (discussed here) and the Digital Migration case before the Supreme Court (discussed here).

Finally, this blogger reckons that ‘web presence and online activity’ ought to be a criteria when considering the performance of IP firms. Generally speaking, the Kenyan IP firms mentioned continue to perform very poorly in the area of publishing current and up-to-date IP news, information, articles on their respective websites. Perhaps, the consideration of this criteria by established ranking systems would jolt the firms into taking their online presence a bit more seriously!

HHM Oraro Law Firm Merger and Intellectual Property Private Practice in Kenya

Harusi nayo!* Its not every day two big law firms get married.

Harusi nayo!* Its not every day two big law firms get married.

Media reports indicate that a deal has been sealed bringing together two prominent Kenyan law firms, Hamilton Harrison & Mathews (HHM) Advocates and Oraro and Company Advocates. It is reported that the Competition Authority of Kenya has been notified of the merger and the law firms are awaiting the latter’s approval before an official announcement is made.

HHM partner Richard Omwela confirmed the merger and told the media: “Once we get the greenlight, the new firm will be bigger and better, allowing more lawyers to specialise.”
Although details of the merger are sketchy, it is reported that the new firm, which is likely to be known as HHM Oraro will seek to position itself for local and regional mega deals in oil, infrastructure and various aspects of commercial transactions.

One possible area for growth and specialisation is intellectual property (IP) law. In a previous post here, we highlighted the sharp increase in IP-related disputes reported in the media as well as those taken to court. This trend bodes well for IP-savvy lawyers keen on assisting their clients to enforce their various assets as well as those seeking to expand and develop IP jurisprudence in Kenya. However, our recent survey on IP specialisation among Kenyan lawyers (see here) shows that only a paltry 25 lawyers spend a minimum of 60% of their time on IP matters. Therefore, it may argued that the HHM Oraro merger could result in an increase in the number of advocates actively handling specialised areas of IP for both local and foreign clients.

However, let us examine the two firms from in terms of their respective areas of expertise in IP.

Each year, the World Trademark Review 1000 (WTR 1000), an essential guide to the world’s leading trademark professionals recommends 1000 global law firms and attorneys considered to be the leaders in the field and delivering top-quality trademark services.

In Kenya, HHM is currently ranked in WTR 1000 Silver Band. HHM’s WTR 1000 review reads in part:

“This leading full-scope business law firm has long maintained a solid and reliable trademark practice, primarily servicing the needs of its existing – largely multinational – corporate clientele. Trademark registration is a particular forte, though as a top-rated commercial litigation firm, it has also proved to be a proficient performer in IP disputes. Richard Omwela and Kiragu Kimani are the key contacts for intellectual property.”

Oraro is not featured in the WTR 1000 rankings however two of its Associates have worked in WTR-ranked firms namely Cindy Oraro and Jackson Awele, the latter with extensive IP experience from a WTR 1000 Gold Band firm.

As many know, Chambers and Partners is a company which identifies and ranks the most outstanding law firms and lawyers in over 180 jurisdictions throughout the world.

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According to Chambers & Partners, HHM is ranked Band 2 in the Corporate and Commercial category law firms in Kenya. In the Corporate/Commercial: Intellectual Property category, Richard Omwela is in Band 3 among Kenya Ranked Lawyers.

HHM’s review reads in part:

“Hamilton Harrison & Mathews is a very high-quality firm and well rounded. It offers a very strong and commercial service

(….)

Notable practitioners

Head of the firm’s commercial and conveyancing department, Richard Omwela also has substantial experience of IP matters. Clients greatly admire his “judgement and gravitas.””

Oraro is not ranked among the Corporate and Commercial category of firms.

In the Dispute Resolution category, both HHM and Oraro are highly ranked by Chambers. Both firms occupy two of the three spots of Band 1 ranked firms in Kenya. George Oraro SC (Founding Partner at Oraro) and Kenneth Fraser, SC (Senior Partner at HHM) are widely considered as the most seasoned dispute resolution lawyers in the country and are both ranked in Band 1. Chacha Odera (Managing Partner at Oraro) is ranked in Band 2, George Murugara and Michi Kirimi (both partners at HHM) are ranked in Band 3 alongside Walter Amoko (partner at Oraro). George Oraro SC enjoys singular distinction as he is also ranked in Band 1 in the category of Dispute Resolution: Arbitrators in Kenya.

All in all, it appears that this is a merger of two notable dispute resolution law firms. Therefore, in the context of IP practice, HHM Oraro would definitely be the go-to firm for contentious IP matters. However with a combined workforce of 15 partners and 20 associates, HHM Oraro could also prove to be a force to be reckoned with in non-contentious corporate and commercial IP work.