Kenyan Anti-Counterfeit Act new laws to fight counterfeiting
23/04/2009

Kenya’s new Anti-Counterfeit Act applies more widely than most anti-counterfeiting legislation in the world, and makes it simpler to enforce one’s rights. It does have some potential weaknesses, however.

The Anti-Counterfeit Act was assented to on 24 December 2008 but has not yet come into force. This could take some months as a number of aspects still need to be dealt with. These include the establishment of an anti-counterfeiting agency, the appointment of a board for the agency, the appointment of inspectors and special advocates in the courts and the establishment of a counterfeit goods depot in terms of Section 29 of the Act.

Furthermore, it is clear from the provisions of the Act that the Commissioner of Customs will have to re-organise his department to deal with his responsibilities in terms of the Act and to detain and seize counterfeit goods which enter or exit Kenya, in terms of Section 34.

While the Anti-Counterfeit Act of 2008, as it will be called, does not replace the Weights and Measures Act, which has previously been used as the enforcement tool in respect of counterfeiting, it signals a major shift in thinking in Kenya. It has been based largely on the South African Counterfeit Goods Act 37 of 1997 but incorporates some improvement and departures from the South African Act.

An intellectual property right, in terms of the Act, is defined as any right protected in terms of the Copyright Act, the Trade Marks Act, the Seed and Plant Varieties Act and the Industrial Property Act. In other words, the Anti-Counterfeiting Act of 2008 in Kenya will protect copyright, trade marks, designs, patents and plant breeders’ rights.

An advantage of the new Act, in addition to its being very wide in its protection, is that the anti-counterfeiting agency will adopt a co-ordinated approach across the various government law enforcement agencies, each of which will have representation on the agency board. This system and approach is already applied in terms of the Copyright Agency. The central agency will deal in a co-ordinated way with training and other matters which are brought to its attention, including complaints of counterfeiting.

The major advantage over the law in South Africa is that it simplifies the procedure of enforcing one’s rights. Inspectors are still required to issue a seizure notice once the goods are seized and move the goods to a counterfeit goods depot. The State must institute criminal proceedings within three months, failing which the goods are returned to the person from whom they were seized. This is a more reasonable time frame than that which is applicable in the Counterfeit Goods Act. The Kenyan Anti-Counterfeit Act does, however, not make specific provision for civil remedies, as the South African Act does.

In reviewing the Kenyan law, it is clear that as far as possible, attempts have been made to deal with issues relating to importation and exportation of counterfeit goods. Like South Africa, Kenya is strategically located on the East Coast and many goods coming into other African neighbours are transhipped through Kenya.
The Anti-Counterfeiting Act of 2008 provides that the Commissioner of Customs can receive applications from intellectual property right holders to register their intellectual property right with him. The Commissioner has three working days to consider the application and grant it if he is satisfied that the IP right subsists and that ownership of the rights has been proved.

It is foreseen that there will be better co-operation regionally in terms of the East African Customs Management Act of 2005 and enforcing rights in relation to import and export or transhipment within the region. Specifically, under Section 32, certain acts of dealing in counterfeit goods are made offences. This includes “the export, import, transhipment and transit through Kenya of any goods which are counterfeit and which are exported, imported, transhipped or transit other than for the private and domestic use of the importer”.

It is hoped that these amendments will give Kenyan authorities more power to take action against goods that purport to be transhipped through Kenya.
The difficulty that is foreseen with the new Kenyan Anti-Counterfeit Act is that, like the South African Act, one first needs to establish that there has been infringement of the relevant intellectual property right. This poses some challenges, especially relating to use of a trade mark specifically where goods are transhipped or in transit.
Unfortunately, in borrowing from the South African legislation, the Kenyans have left in the unfortunate definition relating to “acts of counterfeiting”. The South African courts have grappled with what is meant by this definition and South African judges have indicated that they find this section difficult to comprehend. Hopefully the Kenyan legal minds will find a workable interpretation of this definition.

One aspect of the Kenyan Act that is of concern relates to the destruction of counterfeit goods. The Kenyan authorities have the option to order that the goods are returned to the country from which they originated, if the local authorities are not in a position to destroy them. One can only hope that this will happen only where there is co-operation between the different customs authorities and only in extreme circumstances, where Kenya does not have the resources to destroy the counterfeit goods as a result of their nature. If not applied cautiously, the provision could be used simply to move the problem of the counterfeit goods to another jurisdiction.

It is very clear that every effort has been made by the relevant authorities to better protect intellectual properties in Kenya. The Anti-Counterfeit Act does not replace any other legislation and will merely supplement what already exists. Once the Anti-Counterfeiting Agency and executive authority have been established, it is foreseen that the Act will play a major part in the better enforcement of intellectual property rights within that territory.

Any queries on protecting your intellectual property right in Kenya can be directed to Adams & Adams at marilyn@adamsadams.co.za.
Marilyn Krige
Partner
Adams & Adams
marilyn@adamsadams.co.za