Ten Years Later: Dismal Performance Scorecard for Kenya’s Anti-Counterfeit Agency

In 2008, Anti-Counterfeit Agency (ACA) was birthed as Kenya’s TRIPS-plus experiment to spearhead intellectual property (IP) rights enforcement by coordinating efforts among various state agencies. In our humble opinion, ACA deserves no score higher than 3/10 for its performance in fulfilling its overall statutory mandate in Kenya.

It was envisioned that ACA would be a shining example of an inter-agency approach to IP rights enforcement with private sector coordination. Ten years later, it is safe to say that ACA has failed to live up to its potential. The reason? Two words: Institutional Corruption.

Kenyan Java House Africa Triumphs Against Ugandan Cafe Javas in Crucial Trade Mark Court Case

In a judgment delivered yesterday (February 9th 2016), the High Court of Uganda in Civil Appeal No 13 of 2015 has set aside the decision of the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB). Mr. Justice Madrama Izama allowed the appeal by Nairobi Java House Limited with costs and found that the two marks from Kenya and Uganda in question are capable of concurrent usage.

Readers will recall that in an earlier post here, we confirmed that Nairobi Java House had filed an appeal against the decision of the Registrar in relation to trade mark opposition proceedings filed by Mandela Auto Spares Limited. The proceedings were against the registration of trade mark application numbers 48062/2013 “Java House” and “Java Sun” and 48063/2013 “Nairobi Java House” in the name of Nairobi Java House. The Registrar in his ruling upheld the objection of Mandela Auto Spares Limited and found that the proposed registration of Nairobi Java House’s trade marks would lead to confusion in the marketplace.

Nairobi Java House Rebranding as Trade Mark Appeal Looms in Uganda

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

Many readers will recall that earlier this year the Registrar of Trade Marks in Uganda ruled in favour of Mandela Auto Spares in a matter filed to oppose the move by Nairobi Java House Limited to register trade marks containing the word JAVA in class 43 (restaurant services). The basis of the Ugandan company’s claim was that it was the registered proprietor of trademark numbers 29297 JAVAS in class 30; 40162, 47765, 47766, 47767 all CAFÉ JAVAS in classes 30, 21, 32 and 43 respectively. A copy of the ruling is available here.

This blogger has learned that Nairobi Java House now rebranded as Java House Africa is in the process of appealing the decision of the Registrar in the Commercial Court. In the meantime, Java House continues its aggressive expansion across East Africa and beyond, according to Reuters.

Pay TV Disputes Copyright in Free-to-Air Broadcast: Appeal Case of Wananchi Group Uganda v. New Vision

This blogger has come across a recent ruling by Uganda’s Court of Appeal in the case of Wananchi Group (U) Ltd v. The New Vision Printing & Publishing Co. Ltd. The background of this case is as follows: New Vision had filed an application against Wananchi in the High Court for a temporary injunction seeking to restrain the Wananchi from further infringement of the New Vision’s copyright in the production, air transmission or broadcast of “Bukedde Television” through Wananchi’s Zuku Television.

In the High Court, New Vision contended that Wananchi continued to infringe on the New Vision’s copyright by retransmitting Bukedde TV for private benefit and for personal economic gain without the consent or licence of the owner despite express warning. The High Court agreed with New Vision and granted the order of a temporary injunction. This brings us to the present case of Wananchi’s application in Court of Appeal for an interim order of stay of execution of the order of the lower court.

Cautious Support for Anti-Counterfeit Agency Amidst Public Concerns

This blogger has come across the recently published Gazette Notice No. 6612 in which the Chairman of the Anti-Counterfeit Agency (ACA) has appointed 31 persons to be inspectors for the purposes of the enforcement of the provisions of the Anti-Counterfeit Act. Several commentators have raised several serious concerns about ethnic and regional balancing in the appointments although there is no news of any legal or constitutionality challenges filed to challenge the appointments.

Anti-Counterfeit Agency Cleaning House, Dragged to Labour Court

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.

Blind Opposition to Caller Ringtone Deal between Safaricom and Collecting Societies: High Court Case of Irene Mutisya & Anor v. MCSK & Anor

This blogger has recently come across Nairobi High Court Civil Case No. 262 of 2015 Irene Mutisya & Anor v. Music Copyright Society of Kenya & Anor. In this case Mutisya and another copyright owner Masivo have filed suit against Music Copyright Society of Kenya (MCSK) and mobile network operator Safaricom Limited for copyright infringement. The copyright owners filed an urgent application on 30th July 2015 for a temporary injunction to restrain Safaricom from remitting license fees to MCSK pursuant to a recently concluded license agreement for caller ring-back tones (CRBT) made available through Safaricom’s Skiza platform. The copyright owners also asked the court to restrain both Safaricom and MCSK from implementing the CRBT License Agreement pending the hearing of the application.

Kenya Set to Earn Millions in Individual Fees from WIPO Madrid System

Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.

Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.

As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.

In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.

While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.

From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.

The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:

Designation of KENYA (in an international application or subsequent designation)

– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)

Where the mark is a collective or certification mark

– as above

Renewal of an international registration containing a designation of KENYA:

– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)

Where the mark is a collective or certification mark

– as above

The Madrid Trade Marks Registration System From A Kenyan Perspective

Editor’s note: For more on the Quail farming craze in Kenya, see here.

As many are aware, the system of international registration of trademarks facilitates the obtaining of protection for marks (trademarks and service marks) and since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. During KIPI‘s two-day Trade Marks Law and Practice Training Course (featured here), Sudi Wandabusi, this blogger’s friend and trademarks examiner at KIPI devised a great practical scenario on the international registration of trademarks.

For purposes of the scenario, a local manufacturer, Isindu Financial Limited is the owner of the trade mark “Quail Advanced Strength” (TM No. 95229) registered at KIPI on 07-07-2013. Isindu now instructs IPKenya to advise on how its trade mark can be protected in the following territories: Zambia, Italy, U.S.A, Japan and Ireland, where its products are already being marketed and sold by authorised distributors.

Why use the Madrid System?

Since Isindu’s trade mark is present in countries outside Africa, the Madrid System is the obvious choice for registration. This system makes it possible for owners to obtain and maintain registration in a number of countries through a simple and cost effective procedure. Therefore Isindu only needs to file one international application, in one language, and pay one fee, in one currency – no translation, currency exchange, legal fee costs.

Is Kenya a member of the Madrid System?

Kenya joined the Madrid Union in 1998. It brought into force both the Agreement and the Protocol on June 26 1998.
The system is administered by the International Bureau of WIPO. There are a total of 92 contracting parties to the Madrid Union. A full list of members can be found here.

Is Isindu eligible to use the system?

Any natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol can use the system.

Therefore Isindu’s entitlement to file the international registration would be that it has a a real and effective industrial or commercial establishment in the territory of the Kenya.

Can Isindu claim priority?

From the scenario above, it is stated that TM No. 95229 was registered at KIPI on 07-07-2013. An applicant can claim priority
when filing within six months of the date of an earlier filing.
Therefore, Isindu is still within time as at the date of this blogpost and can claim priority.

How much does it cost?

The international registration fees payable to the International Bureau are available online here. This page also has a ‘fee calculator’ which is very helpful in establishing exactly how much is to be paid. The standard fee is CHF 903 for coloured marks and CHF 653 for black and white with a complementary fee of CHF 100. In addition, there is a handling fee of KES 1000 or USD 13 payable to KIPI.

How do the applicants or agents interact with the Bureau?

Several online services have been introduced by the International Bureau. They enable faster, easier communication between the applicant/agent and the bureau, namely:

1) Madrid Goods & Services Manager is a nifty tool that assists TM applicants/agents in compiling their lists of goods and services to file national and international applications. It is available in several languages and helps avoid irregularities in filing. The tool is indispensable as it enables one see which terms are acceptable by International Bureau and different designated contracting parties

2) Madrid Real–time Status (MRS) is a stand-alone tool that provides the status in real time of trademark documents being processed by WIPO. It enables applicant/agent to see what’s happening to their request at any point in time.

3) Madrid Electronic Alert (MEA) is a free ‘watch service’ that informs anyone interested in monitoring registration status of international marks. It is a subscription-based daily e-mail alert system that alerts when changes are recorded in the International TM register.

4) Madrid Portfolio Manager (MPM) is a web service that allows holder of international registrations and there reps access their international trademark portfolios. It comes in handy when submitting new requests for recordal in WIPO international TM Registry.

Comments:

This blogger notes that despite the fact that Kenya is signatory to the Madrid Union, other neighbouring countries within the East African Community (EAC) are not members, with the exception of Rwanda. Within the African continent, less that 11 countries are members of the Madrid system. It has been argued that the reason for the low number of signatories is that the Madrid system is not attractive to African states. It is indeed noteworthy that the larger economies in Africa are not members of Madrid, including South Africa, Egypt and Nigeria. The strongest resistance has come from trade mark practitioners who have lobbied against this system arguing that they stand to lose revenue (agent fees) under the Madrid system.

In contrast, the national trade marks office, KIPI, would prefer the Madrid System as it provides an extra source of revenue. The 35% revenue sharing provision under Madrid almost guarantees the member states an extra added income of CHF 10, 000 and this sum could be higher depending on the designation. KIPI receives an average of CHF 300,000 annually through the Madrid System, whereas a country such as Botswana receives an average of CHF 500,000 annually.

For information on the Madrid System, check out the WIPO website here and WIPO also has a database of all trade marks registered under the Madrid System available here.

 

 

Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

	Description	PDF	Word
TM 1	Form of authorization of agent	Tm1	Tm1
TM 2	Application for Registration of a mark	Tm2	Tm2
Tm6	Notice of Opposition of Application	Form Tm6	Form Tm6
TM 10	Application for Renewal of mark	Tm10	Tm10
Tm10a	Certificate of registration of trademark	Form10a	Form10a
Tm14	Request to register Assignment or transmission	Tm14	Tm14
Tm17	Request to alter Trade or Business Address in the register	Tm17	Tm17
Tm19	Application to correct Clerical error in register or to ament document, etc.	Tm19	Tm19
Tm20	Application to change name or description in the register	Tm20	Tm20
Tm 21	Application to surrender Trade Mark fro all Goods and Services	Tm 21	Tm 21
Tm22	Application to surrender Trade Mark for some Goods and Services	Tm22	Tm22
Tm23	Application to ender disclaimer or memorandum in Register	Tm23	Tm23
Tm24	Application to add to or alter registered Trade mark	Tm24	Tm24
Tm25	Application for the Marking ,Expunging or varying of an entry in the register	Tm25	Tm25
Tm26	Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register	Tm26	Tm26
TM 27	Application for search under rule 114/Application for preliminary advice as to distinctiveness.	TM 27	TM 27
Tm30	Request for certificate other than under section 22 of the act	Tm30	Tm30
TM 32	Application to enter or alter address for service	TM 32	TM 32
Tm34	Application for alteration of deposited regulations relating to certification of trademark	Tm34	Tm34
Tm43	Application to adapt Classification so that it is in accordance with section 6(2) of the act		Tm43
Tm44     TM 48	Notice of opposition to application to have classification adapted Application for registration of registered user.	Tm44 Tm48	Tm44
Tm53	Application for extension of Time	Tm53	Tm53
Tm54	Order form for copy of document	Tm54	Tm54
Tm55	Application to add goods or services to a Trade Mark or an Application	Tm55	Tm55

 

International Registration of Kenyan Trade Marks

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.