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.

2013 Year in Review: Intellectual Property in Kenya

2013 was an election year for Kenya which resulted in the swearing in of Uhuru Kenyatta as the fourth President of the Republic. 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 mark on IP this 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.

Copyright and Related Rights

In 2013, copyright news was monopolized by Safaricom which was embroiled with two high profile copyright cases with Faulu Kenya and JB Maina. Another popular copyright story was Longhorn’s acquisition of publishing rights for iconic educational textbooks writer, Malkiat Singh.

The year was also memorable for Kenya as she successfully negotiated and signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are BIlind, Visually Impaired or Otherwise Print Disabled.

Industrial Property

In 2013, trade marks stole the show with several far reaching rulings by the Registrar of Trademarks as well as the landmark acquisition of a local trademark by a multinational cosmetics company. In addition, trademark administration has continued to be the major revenue earner for the national IP office, Kenya Industrial Property Institute (KIPI) especially through the Madrid System.

The Red Bull case (available online) was an important decision in that it expanded the Kenyan IP jurisprudence in respect of the doctrines of “conceptual similarity” and “well-known marks”.

In the Basmati case, a clear distinction was drawn between trade marks and geographical indications within the context of Kenya’s international obligations under the World Trade Organisation (WTO) Agreement on Trade Related Aspects of IP (TRIPs) adopted in section 40A of the Kenya Trademarks Act.

In the Pyrex case (available online), the Registrar found that the withdrawal of a threat of opposition does not amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark. This ruling was important because it provides a practical application of two amended provisions of the Act, namely Section 36A and 36B of the Act.

Later in the year, one of the largest cosmetics companies in the world, L’Oréal fully acquired the health and beauty divisions of local firm, Interconsumer Products Ltd, makers of Nice & Lovely brands, in a multi-billion shilling transaction. This acquisition is seen as part of L’Oreal’s push to dominate the East Africa’s low-end cosmetic market.

Legislative Developments

As previously discussed here, several amendments have been proposed to the Copyright and the Anti Counterfeit Acts in the Statute Law Miscellaneous Bill currently before Parliament is passed. Earlier this year, a proposed draft law on the protection of traditional knowledge and traditional cultural expressions was validated.

This year saw the enactment of the Science, Technology and Innovation Act, Consumer Protection Act, Media Council of Kenya Act and Kenya Information and Communication Amendment Act, all of which will affect IP administration and enforcement both directly and indirectly.

For more stories from 2013, check out the IPKenya archive on the right hand side of this page and information from other sites on our twitter feed.

See you all in 2014!

New Kenya Intellectual Property Office Expected in 2014

Daily Nation Cover November 19 2013

As discussed previously by this blogger here, the Kenyatta Administration is keen on overhauling the operations of state corporations in Kenya. It was initially reported that the Presidential Taskforce on Parastatal Reforms (PTPRs) was proposing that the three main Intellectual Property agencies that KECOBO, KIPI and ACA be merged to form a single state corporation.

The Taskforce submits that its proposed reforms are benchmarked on reform initiatives conducted in several jurisdictions including South Africa, Australia, New Zealand, Singapore, Malaysia, China, Nigeria and the United Kingdom. From a IP perspective, it is important to note that the Taskforce report recommends the merger of KECOBO, KIPI & ACA to form Kenya Intellectual Property Office (KIPO).

Recently, the Report by PTPRs was released to the public and a copy of this report is available online here.

According to the Report, all entities previously known as State Corporations shall henceforth be known generally as Government Owned Entities (GOEs). These GOEs have been clustered in four (4) broad classifications as follows:

1. State Corporations: These entities shall be incorporated and managed under the Companies Act Chapter 486 and include: a) Commercial State Corporations; and b) Commercial Corporations with strategic functions that are to be defined through the national development planning process

2. State Agencies: These entities include: a) Executive Agencies; b) Independent Regulatory Agencies; c) Research Institutions, Public Universities, Tertiary Education and Training Institutions

3. County Corporations

4. County Agencies

The Taskforce Report recommends that the Government implement a Centralized Ownership and Oversight Model of all GOEs. The shareholding role for commercial entities shall however be exercised directly by the National Treasury through a Holding Company, the Government Investment Corporation (GIC), which the National Treasury shall incorporate under the Companies Act.

The overarching legal framework governing national government owned entities as well as County Corporations and Agencies will be the Government Owned Entities Bill 2013. This Bill, once enacted, will supersede all current legislation governing State Corporations on matters of governance and include all subsidiaries of Government Owned Entities (GOEs). The Bill will also repeal all individual enabling legislations and recognize the unique characteristics of national State Corporations, national State Agencies, County Corporations, and County
Agencies.

From an IP perspective, the report recommends the creation of a new State Agency to be known as the Kenya Intellectual Property Office (KIPO).

The report at page 107 reads as follows:

Copyright Law and Law Reform

In copyright protection and enforcement the government has established Kenya Industrial Property Institute, Kenya Copyright Board and Anti-Counterweight (sic) Agency. These
institutions sit in each others’ Board of Directors. Best practice has shown that the functions undertaken by the three agencies complement each other and are domiciled in one institution in many countries. It is therefore recommended that the Kenya Copyright Board (KECOBO), Kenya Industrial Property Institute (KIPI) and the Anti-Counterfeit Agency (ACA) be merged into a new State Agency to be known as the Kenya Intellectual Property Office (KIPO).”

It can only be assumed that the Taskforce is referring to IP Law, IP protection and enforcement and not only copyright as erroneously stated in the Report.

On page 192 of the Report, KIPO is classified as an Executive Agency under the broad category of State Agency. The Report elaborates that the enabling legislation for KIPO is yet to be drafted. Finally the Report states that KIPO will be a State Agency under the Cabinet Secretary of Industrialisation and Enterprise Development.

Media reports indicate that President Kenyatta has directed that the recommendations in the Report be implemented in three months time. To this end, Kenyatta directed that a government-led Entities Reforms Implementation Committee would be established to facilitate, oversee and monitor implementation of the Report’s recommendations.

A Kenyan Perspective of South Africa’s Draft National Policy on Intellectual Property

South_africa_parliament1

As many IP enthusiasts may have heard, South Africa has recently published a Draft National Policy on Intellectual Property (IP) (hereafter the Policy). Within the Kenyan context, this blogger has previously questioned the need for a national IP policy particularly in light of the recognition given to IP in the Constitution. However, for the purposes of this post, the policy provides a good basis for a comparative analysis of the state of IP in both South Africa and Kenya as well as possible recommendations to strengthen IP laws.

In the area of patents, Kenya’s IP office undertakes both formal and substantive examinations of patent applications whereas in South Africa, the Policy recommends the establishment of a substantive of a substantive search and examination of patents to address issue of “weak” vs “strong” patents. The policy’s recommendation to amend South African patent law to include pre-and post-opposition would also be instructive to Kenya.

Read the rest of this article here.