In 2008, the assent of the Anti-Counterfeit Act by the then president, the late Mwai Kibaki, put counterfeiters on notice that there was a new sheriff in town: the Anti-Counterfeit Authority (“ACA”) (previously the Anti-Counterfeit Agency).
Over the past 14 years, the ACA has embarked on a campaign to weed out counterfeiters to not only ensure that local and international brands are protected but also that consumers deal with authentic products and services.
In 2018, the Statute Law (Miscellaneous Amendments) Act, 2018 introduced section 34B to the Act. This section provided for the recordal of trade marks in Kenya relating to goods imported in Kenya. The section was to apply equally to all other IP rights registrable under various Kenyan IP statutes such as patents, plant breeders rights, copyright and industrial designs.
The introduction of this section received mixed reactions, with some welcoming the move while others objected to what was perceived as double registration of IP rights owing to the existence of IP registration bodies at the Kenya Copyright Board, the Kenya Industrial Property Institute and the Kenya Plant Health Inspectorate Service. Despite this, the ACA proceeded with its plans to have a recordal system and this is now closer to being a reality in Kenya than ever before.
On 26 April 2022, the ACA published a notice informing the public of the commencement of the recordal of IP rights with effect from 1 July 2022. This therefore means that from this date, any person importing goods and IP owners will have to record such rights with the ACA. Failure to do so will be an offence that could make the offending person liable to a fine, imprisonment or both.
The recordal of IP rights will be processed through the Anti-Counterfeit Authority Integrated Management System (“AIMS”). AIMS will, in addition to recordals, offer services such as renewal of recordals, change of particulars, searches of the recordal database and facilitate registration of agents. The AIMS portal can be accessed by various parties such as IPRs owners, their agents, consumers, importers and even suspects in counterfeit cases.
Any recordal completed on the AIMS system will be valid for a period of 12 months and must be renewed to ensure it retains its validity. Where IP owners change their names or in cases where ownership changes hands, the party who recorded the IP right will be required to inform the ACA accordingly. Where an owner decides to use an agent to manage the recordal processes, it must satisfy itself that the appointed agent is registered with the ACA. This is because, from 1 July 2022, all agents must be admitted and registered with the ACA to perform any functions at the ACA.
With the deadline for compliance barely two months away, brand owners and importers must now familiarise themselves with the processes and costs of compliance to ensure that they are not caught out and their business operations interrupted. It is worth noting that successful recordal of IP rights will be followed by issuance by ACA of a certification mark in the form of a security device. Goods found without this security device will be at risk of possible seizure and destruction by the ACA.