Inching Closer to Plain Packaging: Pictorial Health Warnings and Tobacco Trade Marks in Kenya

James Macharia Health Cabinet Secretary Kenya Tobacco

This blogger has come across Legal Notice No. 169 dated December 5, 2014 which states that the Cabinet Secretary for Health (pictured above), in exercise of the powers conferred by section 53 of the Tobacco Control Act, 2007 has made the Tobacco Control Regulations, 2014 which will come into operation six months from December 5, 2014. A copy of the Legal Notice and the Regulations are available here and here respectively.

Section 8 of the Regulations, whose short title reads: “prohibition on certain product descriptions”, is noteworthy and states as follows:

“8. A person shall not manufacture, sell, distribute, or import a tobacco product, for sale in Kenya, whose package carries a name, brand name, text, trademark or pictorial or any other representation or sign which suggests that the tobacco product is less harmful to health than other tobacco products.”

This section must be read with other sections in Part II of the Regulations on “Packaging and Labeling”:

3. (1) A person who manufactures, sells, distributes or imports a tobacco product shall ensure that every package containing the tobacco product bears warning labels and information required under section 21 of the Act and specified in the Schedule to the Act and the corresponding pictures and pictograms set out in First Schedule.

(…)

4. (1) No person shall manufacture, sell, distribute, or import a tobacco product, device or any other thing that is intended to be used to cover, obscure, mask, alter, or otherwise detract from the display of specified health warnings and messages including pictures and pictograms under the Act or these Regulations.

(…)

5. Where the health warnings and messages including pictograms that are required to be printed on packages are likely to be obscwed or obliterated by a wrapper on the package, the manufacturer, seller disfibutor or importer of the tobacco product shall ensure that the health warnings and messages shall be printed on both the wrapper and the packet.

(…)

6. (1) The manufacturer, seller, distibutor or importer of a tobacco product shall ensure that the specified health warnings and messages including pictograms required under these Regulations are rotated in accordance with section 21 (3) of the Act.

(…)

7. (1) The health messages required under these Regulations on all packages shall be in the form of a text message specified in the Schedule to the Act and a prescribed pictorial message set out First Schedule.

(…)

The Regulations appear to be made in compliance with the World Health Organisation Framework Convention on Tobacco Control (WHO FCTC) reaffirms the right of all people to the highest standard of health and represents a paradigm shift in developing a regulatory strategy to address addictive substances.

The Convention itself does not deal with intellectual property associated with tobacco packaging, particularly trademarks. Of relevance for this discussion is Article 11, which requires of countries to adopt effective measures to ensure:
(i) that tobacco product packaging and labelling do not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics, health effects, hazards or emissions; and
(ii) that any outside packaging and labelling should carry health warnings that should be 50 per cent or more of the principal display areas.

And then there are Guidelines. These provide that countries “should consider adopting measures to restrict or prohibit the use of logos, colours, brand images or promotional information on packaging other than brand names and product names displayed in a standard colour and font style.”

In this connection, the First Schedule of Kenya’s new Tobacco Regulations contains a “list of prescribed health warnings and messages including corresponding pictograms” which must be displayed on every package. These include the following:

tobacco regulations kenya pictorial warning 4

tobacco regulations kenya pictorial warning 3

tobacco regulations kenya pictorial warning 2

tobacco regulations kenya pictorial warning 1

To the relief of Big Tobacco, Kenya seems to have decided against requiring plain packaging: black and white or two other contrasting colours; nothing other than a brand name, a product name and/or manufacturer’s name; and no logos.

Be it as it may, this blogger submits that these Regulations will have the drastic impact of removing the last space for tobacco advertising (i.e. the packaging), reducing the incidence of smoking and thus diminishing the industry’s power to recruit new smokers. Readers of this blog will recall our previous article here on the constitutional and intellectual property arguments around tobacco plain packaging.

Tunisia to Host Pan African Intellectual Property Organization (PAIPO)

AU Assembly 23 Ordinary Session June 2014 Malabo Equatorial Guinea

Two separate media reports here and here indicate that Tunisia will host the African Intellectual Property Organisation (OAPI). These reports are indeed confusing since the francophone African Intellectual Property Organisation (OAPI) is based in Yaoundé, Cameroon – atleast according to the contacts page of OAPI’s official website available here.

This blogger believes that the news reports were referring to PAIPO and not OAPI. As many readers may know, PAIPO was established as a specialized agency of the African Union (AU) that would be responsible for intellectual property (IP) and other emerging issues related to IP in Africa. At the Twenty-Third Ordinary Session of the Assembly of the African Union on 26-27 June 2014 in Malabo, Equatorial Guinea, the Assembly made the following decision on PAIPO:

Assembly/AU/Dec.522(XXIII)
Doc. EX.CL/839(XXV)

The Assembly,

1. TAKES NOTE of the Report and the recommendations of the Extra Ordinary Session of the African Ministerial Conference on Science and Technology (AMCOST V) held from 16 to 18 April 2014 in Brazzaville, Republic of Congo;

2. RECALLS Assembly Decision Assembly/AU/Dec.453(XX) on the Creation of the Pan-African Intellectual Property Organization (PAIPO);

3. TAKES NOTE of the Draft Statute of the Pan African Intellectual Property Organization (PAIPO) and REQUESTS the Commission to submit it to the Specialized Technical Committee on Justice and Legal Affairs for consideration and appropriate recommendations;

4. RECOGNIZES ARIPO and OAPI as building blocks for the creation of a single Pan African Intellectual Property Organization and WELCOMES their support in the implementation of the Heads of State and Government decisions on PAIPO;

5. INVITES Member States, WIPO as well as development organizations and partners to lend support for implementation of the decision;

6. WELCOMES AND ENDORSES the offer by the Republic of Tunisia to host the Headquarter and Secretariat of PAIPO;

7. REQUESTS the Commission to prepare road map for implementation of PAIPO in coordination with the host country and to report progress in this regard to the Summit.

In light of these recent media reports, it may be interesting to consider some of the comments made by IP professionals on PAIPO’s founding statute and intended raison d’etre:

” The news that PAIPO is about to be launched (….) after being in the works for such a long time is alarming for two other reasons. The first of these is that although the draft statute has been long in the making, this has not been through an open or participatory process. There has been no public consultation on the continent nor have civil society, academics and public interest advocates been afforded an opportunity to engage with the proposal or participate in the crafting of the statute. (….) Secondly, the AU has not provided detailed information about its deliberations and decisions pertaining to the establishment of PAIPO. It is ironic that African states have been chastising WIPO for not being transparent enough (….) when the same can be said of them with regard to the establishment of PAIPO.

Is it asking too much of the AU to request that it defer the establishment of PAIPO until a more inclusive and transparent consultative process is carried out? Certainly not, these are the same demands African states make of WIPO. Are the calls for a more nuanced PAIPO statute with a preamble that resounds with developmental goals, public interest concerns and an emphasis on the appropriate balancing of stakeholder interests unreasonable or unachievable?” – Prof. Caroline Ncube, Associate Professor at University of Cape Town, Faculty of Law.

———–

“(….)the lack of consultation and transparency in the process leading up to the production (and potential adoption) of the Draft Statute is something that should be condemned. Intellectual property has become a highly politicised issue, and it is imperative that there be an inclusive and transparent process when initiatives of this nature are embarked upon.

My principal concern at this point in time is of a more pragmatic nature. One has to question the wisdom of trying to establish an African centralised registration system. Would the resources which are to be spent in such an endeavour not be better utilised in ensuring that the intellectual property registries and laws of the various African states are improved in order for them to participate in existing international registration systems such as the Madrid Agreement and Protocol, administered by WIPO, for trade marks? There is no cogent argument for proliferating registration systems, and for focusing on, comparatively, parochial initiatives in an era of ever-expanding cross-border trade.

The fact that I spent about 20 minutes on the African Union’s website attempting to find the Draft Statute (and failed to locate it via that route), and that the ARIPO website was unavailable when I attempted to access it, convinces me that this is an ill-conceived initiative, built on structures that have proven to be dysfunctional (and largely ignored), and, therefore, unsuited to warrant the extra resources which would be dedicated to them.” – Dr. Sadulla Karjiker, Member of the IP Unit at Stellenbosch University, Faculty of Law.

———–

“I do not see how Member States of the AU, African IP agents and other stakeholders can be expected to make a rational decision on the benefits of establishing a new continental IP body within the AU, and especially a continental registration Office, if the constitutive Protocol for such registration Office and the implementing regulations have not been formulated. (…) In my view Article 20 of the draft Statute appears problematic as some Member States of the AU do not provide for automatic ratification or accession to a convention or treaty or agreement, or automatic recognition of the legal status of an international body, without approval by the national Parliaments of Member States. (…)

Apart from the fact that the draft Statute does not define what such industrial property titles will be called (African patent, PAIPO trademark, etc.), the establishment of a supranational registration Office would appear to be a costly duplication of the registration function of current national and regional IP Offices” – Ms. Sara Moyo, President, Zimbabwe Institute of Patent and Trademark Agents (ZIPTA)

———–

“The truth of the matter is that the proposal to establish PAIPO is a misinformed and misguided effort by a small subset of policy makers at the AU that undermines other policy initiatives at the AU and by Member States that seek to: (1) minimize the impact of patent monopolies on access to medicines and other public goods technologies, (2) minimize the impact of copyright monopolies on access to educational and cultural resources, (3) preserve the livelihoods and agricultural vitality of small-scale farmers that still make up the bulk of the Africa economy, and (4) retain policy space for other more creative mechanisms that promote both knowledge creation and cultural expression while preserving affordable access to the same.

This wrongheaded proposal must be stopped. Normative agency like UNAIDS and UNDP and WHO must immediately engage AU stakeholders and issue statements cautioning against adoption of the imbalanced PAIPO proposal in its current form. Other AU bodies must demand a review of the proposed legislation and determine its consistency or inconsistency with other AU policy objectives in the IP, health, education, and development arena. African civil society organizations and their allies must insist that the proposal be euthanized and that policy space be preserved for innovation and access measures that better meet human development needs.” – Prof. Brook K. Baker, Honorary Research Fellow, University of KwaZulu Natal, Durban, S. Africa.

———–

The PAIPO saga continues…

The ‘Digital Genius’ Software Dispute: High Court Ruling in Riara Schools v. Lucas Kimani Case

riara group of schools ICT department kcpe

In a recent ruling by the High Court in the case of Riara Group of Schools Limited v Lucas Kimani [2015] eKLR, Ogola J found that Riara had failed to establish a prima facie case against an ex-employee who is alleged to have wilfully and knowingly infringed Riara’s copyright in a learning/revision computer program known as “Digital Genius”. At the heart of the case is the question whether or not a teacher formerly employed at Riara developed a computer program under his contract of service with Riara.

It is interesting to note that while the supporting evidence in Riara’s application clearly establishes an employment relationship which coincides with the period when the ex-employee claims to have developed the computer program, the court held that Riara has not provided any or enough evidence to support its assertion that the: “said computer program was developed using the Plaintiff [Riara]’s resources which included but are not limited to official working hours spent in designing and developing the software, equipment and machinery including computer hardware and electricity. Further, the utility of the said computer program was tested on the Plaintiff School’s pupils and was thereafter fully implemented and used as a teaching aid and revision material in the aforesaid Plaintiff’s School.”

A copy of the ruling is available here.

“Share A Coke” Campaign in Kenya: Intellectual Property Risk or Marketing Masterstroke?

Share a Coke with IPKenya

Ever since the “Share a Coke” campaign kicked off in Kenya earlier this month, thirsty fans countrywide have been clamouring to find their names on bottles of Coca-Cola. Some have struck gold, while others have left the store empty-handed. As many may already know, Coca Cola’s hugely successful international promotion “Share A Coke” originally started in Australia in 2011 and has since been rolling out around the world, making its African premiere in South Africa towards the end of 2013. This promotion, targetted mainly at teens and millennials, is intended to allow people to take the Coca-Cola script and replace it with their name on a bottle or can of the well-known beverage. For those with less popular or rare names, the digital version of the “Share a Coke” promotion allows users to create a virtual can with their names which is generated in .png format and available for download and social media sharing.

From an intellectual property (IP) perspective, this ‘de-branding’ campaign by Coca Cola is an eye-opener. It is no secret that the Coca-Cola Company has spent billions of dollars registering, protecting and enforcing its IP rights all over the world. For years, “Coca-Cola”, “Coke”, the Contour Bottle Design and the Dynamic Ribbon Device have been registered trademarks of The Coca-Cola Company. Having gone to such lengths to secure its IP rights, the Coca-Cola Company suddenly ditches the iconic “Coca-Cola” name from its bottles and allows the printing of names and other words on its products?!
Clearly, the Sales and Marketing guys in the room overpowered the Legal types when the idea for this ‘de-branding’ campaign was pitched and approved. While it is hard for an IP lawyer to quantify the risks of free-riding, diminishing distinctiveness, dilution and other harm to the Company’s trade marks as a result of “Share A Coke” campaign, the Sales and Marketing guys will have no problem showing how the campaign has boosted sales, provided the Company with enormous amounts of user-generated promotional content and driven traffic to the Company’s web and social media platforms.

This blogger recently visited Kenya’s “Share A Coke” website and created a virtual can, which is pictured above and available online here: https://ke.shareacokeafrica.com/can/Ipkenya. However, when one looks at the Terms of Use on the site available here, there are two IP-related issues which appear not to have been addressed:

1. What happens when a user creates a virtual can which contains a name which is a third party’s IP rights? The Terms of Use on the site ought to clearly prohibit the use of such names otherwise it may end up being held liable. In this regard, Coca-Cola ought to exercise its best discretion in determining which names may be infringing on third party IP rights.

2. What happens when a user makes commercial use of a virtual can without regard to Coca Cola’s IP rights? The Terms of Use ought to clearly state that the cans are for personal use only, including sharing on social media sites. Additionally, the Terms ought to prohibit any selling of the virtual can or the image on the COKE can. More importantly, the Terms should be explicit that the use of the site to generate a virtual can does not have the effect of granting rights in any of the intellectual property on the COKE bottles and cans, including the rendering of the names.

Finally, this blogger would invite readers to share any IP-related commentaries and articles on the “Share A Coke” campaign.

Kenya’s Leading IP Professionals According to 2015 Edition of World Trademark Review 1000

wtr1000logo

“As more and more companies look to Africa for strategic growth, and as intellectual property (IP) becomes increasingly important to the continent’s economic agenda, trade mark activity in Kenya – the gateway to the East African market – has flourished.” – World Trademark Review 1000 – The World’s Leading Trademark Professionals.

In a previous blogpost titled “Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya”, we considered some 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 Africa). From the data presented, it was clear that the erstwhile dominance of K&S has receded with CH leading the way in trade mark prosecutions.

WTR 1000 2015 Firm Rankings kenya This week the 2015 World Trademark Review 1000 rankings were published online here. These WTR 1000 rankings confirm this blogger’s view to the effect that “heightened competition has raised standards even higher across the board.” Nine firms made it to this year’s WTR 1000 list ranked as follows: 1. CH (Gold); 2. IKM (Gold); 3. K&S (Gold); 4. CFL (Silver); 5. D&F (Silver); 6. HHM Oraro (Silver); 7. MMC Africa (Silver); 8. NN&K (Silver) and 9. S&S (Silver).

Among the three Gold Band firms in Kenya, CH’s review is the longest and most praiseworthy. The first two sentences alone of CH’s review contain a litany of superlatives like “unmatched”, “frontrunner” and “brightest” while CH’s Head of IP, John Syekei is described as “enormously popular throughout the region”. Syekei is once again ranked in the Gold Band of WTR 1000 Individuals behind IKM’s William Maema and K&S’s Peter Hime, who remains the top ranked IP professional in Kenya.

With its recent merger, HHM Oraro has become the largest firm in Kenya (17 Partners) and now has a whooping total of about ten (10) IP-savvy lawyers on its roster. This blogger expects HHM Oraro to attain the coveted Gold Band ranking if the merger is able to capitalise on its size and expertise to secure consistent big ticket commercial IP work. HHM Oraro’s swanky new website is available here.

It is impressive that CFL is ranked first among the Silver Band firms, which is truly a testament to the outstanding job being done by IP Partner Lorna Mbatia. Mbatia is credited with building “excellent relations with a raft of prominent US law firms, as well as top players in South Africa” which has made CFL “one of the fastest-growing trademark practices around.” According to WTR 1000 sources, Mbatia “has forged close ties with key personnel at different IP registries across East Africa; as a result, she is a great choice for clients with regional requirements.”

MMC Africa’s review stands out among all other ranked firms given its creative approach to IP practice. According to WTR 1000 sources, MMC has moved from being “reliant on instructions from foreign companies” to “fielding requests from an increased number of locals, thanks to its extensive non-billable work in educating domestic entities on the importance of trademark protection”. MMC’s IP Team is led by Nancy Karanu who is credited as an “effective motivator of her team” and “forward-thinking associate” Peter Kamero. Kudos to MMC’s Kamero who is the only Associate in the WTR 1000 Individuals rankings.

WTR 1000 2015 Individuals Rankings Kenya

This blogger wonders whether D&F, a newcomer on the WTR 1000 list, will survive the fierce competition among IP law practices. In this regard, many will recall the exodus of four key partners from D&F to CH in late 2014, including Njau Mukuha who is cited by the WTR 1000 as the Partner who “oversees the IP practice” at D&F. As D&F regroups, the three-way contest between indigenous firms NNK, G&C and SS will continue for the top spot among the Silver Band law firms.

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!

President Assents to Anti-Counterfeit (Amendment) Act 2014

parliament of kenya by diasporadical

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.