The principal legislation governing counterfeit goods in Kenya is the Anti-Counterfeit Act of 2008. Kenya is one of the few jurisdictions in Africa to have legislation dedicated to anti-counterfeiting.
Section 34 of the Act read with the Regulations of 2010 provide that a trade mark proprietor may apply to the Commissioner of the Kenya Revenue Authority (KRA) for a recordal of its intellectual property rights.
The effect of an approved application with KRA is that it empowers the Commissioner to detain suspected counterfeit goods imported into Kenya. Detection of counterfeit goods at the point of entry is beneficial before it is disseminated into different parts of the country where it may be more challenging to track.
The application for recordal is accompanied by:
- a power of attorney;
- an indemnity in favour of KRA;
- proof of the applicant’s intellectual property right;
- an affidavit sworn to by an authorised representative of the applicant;
- a specimen of the genuine goods which are sought to be protected; and
- payment of an official fee.
Once the application has been submitted, the Commissioner shall consider and deal with the application within three working days.
It must be satisfied that there is a prima facie case that:
- the goods claimed to be protected are, in fact, protected;
- the IP right(s) on which the application is based subsists; and
- the applicant is the owner of the IP right.
The Commissioner shall, in writing, inform the applicant whether the application has been granted and, if so, stipulate the duration thereof. The duration may not extend beyond the last day of the period for which the intellectual property right subsists. Conversely, if the application has been rejected, written reasons must be provided by the Commissioner.
In view of the simplified processes set out above, it is recommended that brand holders consider recording their intellectual property rights with KRA.
It is recommended that, complementary to this, members of KRA be provided with training on the protected goods.