By Marius Schneider, ECTA International Trade Committee, IPvocate, BE and MU

Announced since January 2019, following amendments to the Anti-Counterfeit Act, the mandatory recordal of all IP rights for goods imported into Kenya will soon become a reality. Companies importing their products in Kenya, whether directly or through local subsidiaries, must record their trade marks and other IP rights with the Anti-Counterfeit Authority (ACA) by 1 January 2023. This obligation applies to all goods bearing a valid trade mark imported into the country, whether the trade mark is registered in Kenya or abroad, as long as the trade mark is still registered. Raw materials, that is, items used as ingredients in the manufacture of goods are excluded. It is an offense to import into Kenya goods whose IP rights have not been recorded with ACA. In the future, any authorised distributor of imported goods will also be requested to notify the ACA.

There are some concerns about the implications of such a rule for trade mark owners that have deliberately chosen not to register their trade mark in Kenya. To illustrate, there are trade mark owners for whom Kenya is not an important market and who therefore do not wish to incur the costs to register their trade marks in Kenya. However, the same trade mark owners may have no issue with smaller traders purchasing their products from abroad and bringing them into Kenya. The compulsory recordal of all imported goods would negatively impact their overall sales, as if the trade mark owner does not record its trade mark in Kenya, it is not possible for an importer to bring the goods into the country.

The requirements for recordation include a certified copy of the trade mark registration, samples or photographs of relevant goods, a description of the goods and details of the place of manufacture of the goods. A fee must be paid per trade mark and per class. It is necessary to act through an authorised agent. The ACA shall process all applications within thirty (30) days and all recorded IP shall be published in the ACA’s monthly newsletter.

A recordation shall remain in force for a period of one year from the date of approval of the application for recordation or the current registration period of the trade mark right, whichever is shorter. An application for the renewal of a recordal should be filed at least thirty (30) days before its expiry. A renewal fee must be paid. Any change in ownership of a recorded IP right shall be notified to the ACA.

The trade mark information will be made available on a database visible to ACA inspectors and other law enforcement officers, such as customs. The purpose of the recordation is to facilitate access to information for enforcement officers on goods to be imported into the country, which will enable both customs and border officials to pro-actively identify and seize counterfeits at the border before entry into the country.

The recordal of all trade marks is an ambitious task which has been met with a few hiccups along the way. The first deadline for rights owners to record their trade mark was extremely short. The first public notice on the commencement of the recordation was published on 26 April 2022 with a deadline of 1 July 2022. It would have been difficult to record all trade marks within such a short period of time. In addition, the website to register the trade marks was down for a few weeks. Furthermore, while the law provides for the recordation of all intellectual property rights, in practice, it seems the recordal is focused on trade marks for the time being. Still, the recordal reflects the strong interest of the Kenyan government in fighting counterfeits. Many rights holders have complained as to the cost of the recordal. Should the ACA proactively do its job, seizing counterfeit goods, there is no doubt that the fees paid will prove to be a valuable investment for rights holders, diminishing the availability of counterfeits in Kenya and in the broader East African region.