Behold, The Inter-Agency Anti-Illicit Trade Executive Forum and Technical Working Group

Kenya Gazette July 2018 Inter-Agency Anti-Illicit Trade Executive Forum and Technical Working Group Ministry Industry Trade

The recently formed Inter-Agency Anti-Illicit Trade clique sounds like it could have been a WhatsApp group. In last Friday’s Kenya Gazette, the Minister at the time announced the establishment and appointment of both an Inter-Agency Anti-Illicit Trade Executive Forum (23 members in total) and an Inter-Agency Anti-Illicit Trade Technical Working Group (24 members in total). The Executive Forum and Technical Working Group are apparently expected to deliver on the President’s Big 4 Agenda pillar of enhancing manufacturing so that the sector contributes 15% to the country’s Gross Domestic Product (GDP) from 9.2% in 2016.

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Private Prosecutor Can Appear as Witness in Same Criminal Copyright Suit: Case of Albert Gacheru Kiarie and Wamaitu Productions

A recent judgment by the High Court in the case of Albert Gacheru Kiarie T/A Wamaitu Productions v James Maina Munene & 7 others [2016] eKLR is likely to have profound ramifications for the enforcement of intellectual property (IP) rights in Kenya. At the heart of this case is a catalogue of widely popular vernacular songs such as “Mariru (Mwendwa Wakwa Mariru)” which is featured in the video above by Gacheru and produced by the latter’s company, Wamaitu.

According to Gacheru, his music and those of other rights holders he was involved with through his Wamaitu label have all been the subject of piracy and copyright infringement for many years. From 2004, Gacheru was the complainant in a criminal copyright infringement case (Criminal Case No. PP 06 of 2004) and was later granted permission to privately prosecute the case but he was then barred from continuing to undertake the private prosecution for the reason that he intended to serve as a witness in the same case. Gacheru appealed this decision insisting that he should be allowed to act as private prosecutor and witness in his case. The present judgment settles this 12 year old dispute on this matter.

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Court Upholds Anti-Counterfeit Agency Raid and Seizure: Shikanisha Shoes Collection v Attorney General

simba land counterfeit shoes timberland shikanisha nakuru kenya ACA anti-counterfeit agency raid 2016

How to spot ‘fake’ Timberland shoes 101

Following the high profile raid and seizure of a ‘fake’ shoes shop in Nakuru (see video footage here), the court has delivered a recent judgment in the case of Paul Kihara Nduba t/a Shikanisha Shoes Collection v Attorney General & another [2016] eKLR in which the owner of the Nakuru shoes shop challenged the enforcement actions taken by the Anti-Counterfeit Agency (ACA). The Petitioner sought several declaratory orders from the court to the effect that Section 23 (c) of the Anti-Counterfeit Act No. 13 of 2008 is unconstitutional and inconsistent with Articles 23 (2), 25 (c) and 31 (a) of the Constitution of Kenya and that ACA acted in excess of and in violation of Section 31 (a) and (b) of the Constitution.

In determining this petition, the court addressed the following issues: 1) Whether this petition is competent; 2) Whether the seizure of the Petitioner’s goods by ACA was lawful; and 3) Whether the Petitioner is entitled to the orders sought in the petition.

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Anti-Counterfeit Agency Cleaning House, Dragged to Labour Court

Anti-Counterfeit Agency Boss Dr. John Akoten Inspector General of Police Joseph Boinett

Readers of this blog will recall a previous report here that the Anti-Counterfeit Agency (ACA) reinvigorated under the chairmanship of Polycarp Igathe took the unprecedented step of sending four of its senior officers on compulsory leave following numerous complaints from manufacturers, specifically, owners of intellectual property (IP) rights, against the officers who are allegedly engaged in misconduct and defeating the very purpose for which they were engaged in combating counterfeiting. The ACA officers sent on compulsory leave included; Deputy Director for Enforcement, Prosecution and Legal Services Mr. Johnson Adera, Assistant Director for Enforcement Mr. Abdikadir Mohamed, Anti-Counterfeit Inspector II Mr. Weldon Kiprotich Sigei and Anti-Counterfeit Inspector I, Mr. Sammy Arekai Sarich.

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Strathmore’s CIPIT to Launch IP Course on Patent Drafting and Prosecution

CIPIT IP Course Patent Drafting and Prosecution

The Centre for Intellectual Property and Information Technology Law (CIPIT) has informed us that it is about to launch a specialised course on Patent drafting and prosecution!

This exciting new course will be broken down into 3 modules taught through a rigorous combination of offline homework assignments and online tutorials spanning a period of three months. The modules will cover a broad range of topics including introduction to patenting, strategy for drafting as well as strategy for filing and advising clients in patent matters. The course will be certified by Strathmore University Law School on successful completion of all the course requirements.

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Are Intellectual Property Lawyers in Kenya Undercutting by Charging Less in Legal Fees?

supreme-court-fountain-kenya

This blogger recently received the following communication from the Law Society of Kenya (LSK):

UNDERCUTTING

The Council of Law Society of Kenya wishes to draw the attention of members to the provisions of paragraph 4 of The Advocates (Remuneration) (Amendment) Order 2014 which provides as follows:-

“4. An Advocate shall not agree or accept his remuneration at less than provided for by this Order.”

It has come to the attention of the Council that some law firms and advocates are undercutting by charging less than what is provided for under the order.

We are in the process of investigating the various complaints. Any member involved should know that this amounts to professional misconduct.

APOLLO MBOYA, HSC
SECRETARY/CEO

As many may know, the Advocates Act empowers the Chief Justice and President of the Supreme Court to make orders relating to the remuneration of Advocates for both contentious and non-contentious work. This section is the basis for the Advocates Remuneration Order which sets the minimum charges that an Advocate may charge for services. The Order was recently amended through Legal Notice No. 35 dated April 11, 2014. Curiously, LSK have not uploaded a copy of the Advocates (Remuneration) (Amendment) Order 2014 on their official website available here. However a copy of the Order is available on the Kenya Law website available here.

From an intellectual property (IP) perspective, Schedules 4 and 12 of the Order deal with Trade Marks and Patents, Designs and Utility Models respectively.

For instance, with regard to trade marks, the Order provides that an advocate must not charge less than Kshs. 7,500 for “taking instructions to advise on registrability of a mark or on a point of law or practice”. In a previous post here, we discussed the heightened competition among Kenyan firms with regard to trade mark practice, particularly in light of the recent 2015 WTR1000 rankings. However, this blogger submits that the fee of Kshs. 7,500 is already too low for any of the IP law firms and advocates to be engaged in undercutting. This reasoning may easily apply to other types of trade mark work such as applications, registrations, assignments etc.

With regard to patents, designs and utility models, the Order provides that an advocate must not charge less than Kshs. 25,000 to advise on patentability of an invention or registrability of an industrial design or a utility model or on a point of law or practice. This blogger submits that given the complexity of this area of industrial property work and the duration it generally takes to complete such work, it highly unlikely that any advocate or law firm would consider undercutting. However, the increased awareness among Kenyan inventors and innovators on the need to protect their industrial property may be an important factor fueling undercutting.

This blogger invites readers to share freely their views and experiences with how advocates and law firms charge for intellectual property legal services in Kenya.

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!