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!

The Jubilee Government – One Year Later: Waiting for the Intellectual Property Organisation of Kenya

gado editorial cartoon April 10 2014 daily nation

As many readers may know, the Jubilee government of President Uhuru Kenyatta, his Deputy William Ruto and his Cabinet mark the end of their first year in office this month. To this end, Gado’s comic in today’s Daily Nation newspaper depicts Kenyatta and Ruto being accused of copyright infringement by the immediate former president Kibaki. The message is clear: the Jubilee government is literally singing the same tune as the previous government.

As this blogger has previously noted, 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 lasting mark on IP in the past 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. (See this blogger’s comments on the merger here and here).

According to recent media reports, the heads of the various government parastatals spent the month of March at the Kenya School of Government deliberating and making recommendations to the Jubilee Government on the best ways to merge the various state agencies across the various sectors, including intellectual property administration and enforcement. Unconfirmed whispers received by this blogger indicate that the proposed name for the new IP body is the Intellectual Property Organisation of Kenya (IPOK) which will be composed of three directorates (Copyright and Related Rights, Industrial Property and Anti-Counterfeit). This new body, IPOK, will be run by a Director-General, much like the African Regional Intellectual Property Organisation (ARIPO) or the World Intellectual Property Organisation (WIPO).

Regardless of the new IP body’s format, it is clear that members of the Jubilee Cabinet will play a crucial role to ensure that this body functions smoothly and delivers on the expectations of Kenyans. In particular, the Cabinet Secretaries in charge of Industrialisation, Justice and Culture will play the greatest role to midwife and steer the operationalisation of the proposed IP body. In a recent publication titled “Cabinet Scorecard”, the Star newspaper used the following rating to gauge the performance of the Jubilee Cabinet over the past year:

“A. You are doing an excellent job

B. Good, but room for improvement

C. You are okay

D. Get your act together

E. Resign

F. Please fire him, Mr President”

According to the Star, no member of the Executive obtained an “A” grade with Kenyatta being the highest scorer with a “B” grade. The Cabinet Secretary for Industrialisation, Adan Mohammed was among the lowest scorers with a “D” grade.

The scorecard reads in part:

“A year later, no one can say with certainty whether he [Mohammed] has done anything let alone inspire change. Nothing much has been heard of his ministry and nothing has reverberated on the ground from the golden touch everyone expected from him…It is no surprising therefore that in the ministry’s website, only three events appear in the “news and events” category one year later.”

Many will recall that Mohammed’s docket is the parent ministry for two out of the three IP agencies to be merged, namely the Kenya Industrial Property Institute (KIPI) and the Anti-Counterfeit Agency (ACA). Furthermore, it is widely speculated that the Industrialisation Ministry may be charged with direct oversight and supervision over the new IP body.

As the Jubilee government enters the second year of its administration, this blogger will continue to review the highs and lows of the Executive, including the current national IP offices, in promoting, supporting and protection the IP rights of the Kenyans.

QOTD: Corporate Authorship and Duration of Copyright in Kenya

kenya application for registration of copyright form KeCoBo

Today’s Question of the Day (QOTD) is on the duration of copyright where the author of the copyright work is a juristic person.

Authorship is at the core of copyright law. It determines ownership of copyright in the first instance. It provides a defence to alleged infringement. Most importantly, authorship determines the duration of copyright.

Section 2(1) of the Copyright Act defines an “author” in relation to the various categories of copyright works as a “person”

Section 23(2) of the Act states that copyright lasts for 50 years after the death of the author. The duration of copyright is computed from the end of the year in which the author dies for literary, musical and artistic works excluding photographs. The length of copyright protection is measured by reference to the human author’s lifespan.

The cumulative effect of these two sections of the Act would be that the word “person” refers only to a natural person, since the length of copyright protection is measured by reference to the human lifespan.

However, the current practice and procedures for copyright registration in Kenya allow for both natural and juristic persons to be applicants as well as authors for the purposes of copyright registration. Where the application for registration of copyright is successful, the copyright registration certificate issued by the Kenya Copyright Board (KeCoBo) may be in the name of either an individual or a company.

The question then arises, how long does the copyright last where the author is a juristic person and not a natural person?

Given that a juristic person, unlike a natural person, enjoys perpetual succession, does this mean that copyright in works of corporate authorship exist in perpetuity never to expire?

Read the rest over at the CIPIT Law Blog here.