Kenya’s Computer Misuse and Cybercrimes Bill Signed into Law

On 16 May 2018, President Uhuru Kenyatta (pictured above) assented to the Computer Misuse and Cybercrimes Bill, 2018. The Bill was passed by the National Assembly on 26 April 2018. Readers of this blog will note that, unlike the previous Computer and Cybercrimes Bill, 2017 that was first tabled in Parliament, the Act now contains some new provisions relating to blockchain, mobile money, offences related to cybersquatting, electronic messages, revenge porn, identity theft and impersonation, as well as the newly created National Computer and Cybercrimes Coordination Committee. A copy of the Act is available here.

From an intellectual property (IP) perspective, the Act is significant for several reasons, including that it creates new offences and prescribes penalties related to cyber-infringements, it regulates jurisdiction, as well as the powers to investigate search and gain access to or seize items in relation to cybercrimes. It also regulates aspects of electronic evidence, relative to cybercrimes as well as aspects of international cooperation in respect to investigations of cybercrimes. Finally it creates several stringent obligations and requirements for service providers.

For Your Own Protection: Why Proposed Anti-Counterfeit Act Amendments Make Sense

The word ‘Disconnect’ (see caption image above) may be the title of the latest Kenyan blockbuster film but it also embodies the current raging debate over proposed changes to The Anti-Counterfeit Act No. 13 of 2008. In our previous blogposts here and here, we have largely dwelt on the demerits of the proposals contained in the Statute Law (Miscellaneous Amendments) Bill 2018, which if enacted, would radically affect intellectual property (IP) enforcement in Kenya, principally undertaken by Anti-Counterfeit Agency (ACA).

Meanwhile, some readers of this blog, who happen to be IP practitioners specialising in brand enforcement and anti-counterfeiting matters, have rightly pointed out that it is equally important to consider the merits of and benefits expected from the proposed changes to the Act if and when the omnibus Bill is enacted. In particular, this blogpost will focus on the proposals relating to offences and the ‘recordation’ requirements.

Proposed Copyright Act Amendments on Liability of Internet Service Providers

In an earlier post here, this blogger discussed a set of draft amendments published by Kenya Copyright Board (KECOBO) for public comments on the subject of internet service providers (ISPs) and web blocking measures in cases of online copyright infringements in Kenya. Subsequently this blogger discussed here several comments submitted to KECOBO on the draft ISP provisions.

This week, KECOBO has published a revised set of draft amendments on ISP liability available here. KECOBO is once again requesting the public to give comments on these ISP provisions through the email account: publicforum@copyright.go.ke. In this regard, KECOBO has confirmed that it shall convene a consultative public forum on February 11th 2016 at the Auditorium of NHIF Building starting at 8:00am.

This blogpost is a commentary of the key changes in the revised draft ISP provisions from KECOBO.

Uganda: Court Awards 400 Million Shillings for Contempt of Court in Trade Mark Infringement Suit

This blogger has come across a recent judgment from the Commercial Division of the Ugandan High Court in the case of Megha Industries (U) Ltd v Comfoam Uganda Limited [2014] UGCOMMC 162 relating to alleged infringement by Comfoam of cover designs on mattresses registered under the trade mark “ROYALFOAM” by the Megha. Coincidentally, many readers of this blog will note that the expression "going to the mattresses" used in the classic 1972 movie The Godfather, is a euphemism that means “going to war”. So, Megha went to war over its mattresses and Comfoam admitted to passing off Megha’s goods so the parties entered into a consent judgment on 03.02.12, which was sealed by the court on 17.02.12. By the consent decree, a permanent injunction was issued restraining Comfoam, its agents or servants from passing off its goods as Megha’s ROYALFOAM brand of mattresses. The injunction also restrained Comfoam from further producing and or manufacturing mattresses with the infringing mattress cover design the subject of the suit. In the course of the court case, Megha was able to successfully prove that Comfoam’s mattress cover designs were similar to that of Megha’s mattress cover design.

However, in the present case, Megha contended that in total disregard of the consent judgment, Comfoam has continued to manufacture the mattresses using covers similar to its own. Megha further pointed out that an interim order issued by court on 08.07.14 restraining Comfoam from continued passing off of its mattresses as those of Megha had been disregarded hence its prayer that Comfoam be found in contempt of court. In its defence, Comfoam admitted that parties reached a settlement and entered a consent judgment and in obedience to the judgment immediately stopped manufacturing the offending mattresses, changed their designs and registered Trade Marks on them and are lawfully producing mattresses with their covers under the lawfully registered trademarks and are therefore not in contempt of court orders. Comfoam argued that the order did not prohibit them from manufacturing mattresses per se but prohibited them from manufacturing or selling or passing off its mattresses as those of Megha.

In arriving at its finding that Comfoam were in contempt of court orders, the court observed that the mattresses covers by Comfoam were very similar to those of Megha in design and color and the only difference is that Comfoam’s covers bore its own company name. The court’s ultimate decision was as follows:

The application is allowed for all the reasons set out herein and the following orders are made:-

1. A suspended sentence of six months committal is to be meted out to the Directors of the Respondent Company, if the acts that were forbidden by court in the consent order persist.

2. Exemplary damages of shs. 300,000,000/- are awarded to the Applicant Company with payment of interest at court rate from date of this ruling till payment in full.

3. The sum of shs. 100,000,000/- is awarded against the Respondent as a penalty for contempt of court orders in Civil Suit 269/2011. The sum is to be deposited in court.

4. The mattresses with the infringing cover design shall be removed from the market for destruction with the assistance of police following the procedures set out in the Trade Marks Act, upon failure of which a writ of sequestration will issue.

5. Taxed cost of the application are also granted to the Applicant.

A copy of the full judgment is available here.

President Assents to Anti-Counterfeit (Amendment) Act 2014

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.

Proposed Intellectual Property Law Amendments: Kenya Anti-Counterfeit Act

In an earlier blogpost here, this blogger discussed proposed amendments to the Copyright Act introduced through the Statute Law (Miscellaneous Amendments) Bill, 2013 published in Kenya Gazette Supplement No. 146 (Bills No. 32). In similar fashion, this Bill also seeks to amend four sections of the Anti-Counterfeit Act, namely sections 2, 6, 16 and 34. A copy of this Bill is available here (See pages 933-936).

Read the rest of this article here.