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

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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.

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

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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.

#PharmaGate: South Africa’s Push for Patent Law Reforms Exposes Both Government and Drug Companies

The Mail and Guardian (M&G) newspaper in South Africa published a story titled: “Motsoaledi: Big pharma’s ‘satanic’ plot is genocide” where it is reported that Health minister Aaron Motsoaledi is livid about a pharmaceutical company campaign he says will restrict access to crucial drugs. This plan which was leaked to the press is now at the heart of the so-called #PharmaGate scandal which has received widespread condemnation.

All in all, this blogger submits that #PharmaGate exposes the South Africa government’s criticized track record with regard to implementation of existing laws relating to access to medicines. In addition, the Trade and Industry’s Ministry unsatisfactory drafting of the DNIPP is exposed once more. Therefore the Health Minister’s latest sensationalist remarks reported by the M&G appear to be intend to deflect attention from the above issues of poor implementation and drafting by the Executive branch. As for the drug companies, #PharmaGate only exposes the capitalist and pro-intellectual property (IP) ownership stance of Big Pharma, aptly captured in the critically acclaimed documentary, “Fire in The Blood”, whose trailer is featured above.

Read the full story here.

Summary of the Industrial Property Act 2001

The main object of this Act is to provide for the promotion of inventive and innovative activities, to facilitate the acquisition of technology through the grant and regulation of patents, utility models, technovations and industrial designs. Section 3 of the Act establishes the Kenya Industrial Property Institute (KIPI).

KIPI is the main implementation and administration agency for industrial property in Kenya. It liaises with other national, regional and transnational intellectual property offices, patent offices and international organizations that are involved in industrial property protection. KIPI’s mandate includes: considering applications for and granting industrial property rights; screening technology transfer agreements and licences; providing to the public industrial property information for technological and economic development; and promoting inventiveness and innovativeness in Kenya.

The Act also establishes the Industrial Property Tribunal to deal with cases of infringement. Section 109 of the Act also criminalises infringement on others patents, registered utility models or industrial designs.

The application forms for patent, industrial design and utility model are available here.
The current fees payable to KIPI for patent, industrial design and utility model applications are available here.

 

Patents and Utility Models under the Industrial Property Act

hippo water roller afrigarnics limited isaiah esipisu

A patent is a legal document granted by a State that secures to the holder, for a limited period, the right to exclude others from making, using, selling, offering for sale, and importing the patented subject matter. Any new and useful process, product, composition of matter, or any improvement thereof, may be patented, if such invention meets these three requirements: (1) Novelty; (2) Inventive step i.e must not be obvious to a person of ordinary skills in that field of art, and (3) Industrial applicability.

The following are not patentable:

  • Discoveries or findings that are products or processes of nature, where mankind has not participated in their creations
  • Scientific theories and mathematical methods
  • Schemes, rules or methods of doing businesses or playing games or purely performing mental acts.
  • Methods of treatments of both human and animals by surgery or therapy as well as diagnostic methods practice thereto, except products for use thereof.
  • Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation

 

The steps to be followed for grant of a patent in Kenya are as follows:

8 kosgei kipi 2010

NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.

Industrial Designs under the Industrial Property Act

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An industrial design refers to the ornamental or aesthetic features of a product.  In other words, it refers only to the appearance of a product and NOT the technical or functional aspects.

Any products of industry can be protected as an industrial design including: fashions, handicrafts, technical and medical instruments, watches, jewellery, household products, toys, furniture, electrical appliances, cars; architectural structures; textile designs; sports equipment; packaging; containers and “get–up” of products

The requirements for industrial design protection are: (1) Novelty;  (2) Originality i.e. independently created; and (3) Design must have “individual character” – when overall impression is evaluated against others.

The registration process for an industrial design in Kenya is as follows:

10 kosgei kipi 2010

NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.