In a significant and proactive move to fight trade in counterfeit goods, Kenya’s Anti-Counterfeit Authority (ACA) is commencing implementation of recordation of intellectual property rights. This process is on the back of amendments made to the Anti-Counterfeit Act, No. 13 of 2008 (the Anti-Counterfeit Act) that introduced a new section 34B which requires that trademarks and other IP rights relating to goods to be imported into Kenya shall be recorded with the ACA.

The process of recordation is further elaborated in the Anti-Counterfeit (Recordation) Regulations, 2021.

The implementation of the said amendments and regulations has been delayed as the ACA was putting in place the infrastructure to be used for the recordation. It has now been confirmed that the recordation is to be made on an online platform known as the Anti-Counterfeit Authority Integrated Management System.

The recordation process applies to all forms of IP rights including trademarks, patents, copyright, trade names and any other form of IP rights.

The requirement to record IP rights with the ACA is irrespective of their place of registration.

It is critically important to note that it is now a criminal offence under the Anti-Counterfeit Act for any person to import into Kenya any goods or items bearing a trademark, trade name or copyright that has not been recorded with the ACA.

Key elements of the recordation process

1. Application for recordation

An application for recordation is required to be made by the owner of the IP right in question by way of a prescribed form accompanied by the prescribed fee.

The application for recordation must include the following information:

• the name, complete business address and citizenship of the trademark owner or owners (if a partnership, then the citizenship of each partner; if an association or corporation, then the State, country or other political jurisdiction within which it was organised, incorporated or created);
• the places of manufacture of goods bearing the IP right;
• a sample of the goods bearing the IP right or a sufficient digital photographic representation of the  goods with appropriate details for identification and differentiation from any counterfeits;
• the name and principal business address of each foreign person or business entity authorised or licensed to use the IP right and a statement as to the authorised use; and
• the identity of any parent, subsidiary company or other foreign company under common ownership or control which uses the IP right abroad.

The application must be accompanied by a copy of the certificate of registration relating to the IP right being recorded, duly certified by the registering authority and showing title to the IP right in the name of the applicant.

Within 30 days of the filing of the application for recordal, the ACA is required to notify the applicant in writing of the approval or denial of the application.

2. Appointment of agent

The owner of an IP right may appoint an agent to act on the owner’s behalf in the recordation of the IP right or any procedure in relation thereto.

The following persons are qualified to act as agents of IP rights owners and to file applications for the recordation of IP rights before the ACA:

• members of any statutory professional body such as the Advocates of the High Court of Kenya; and
• persons who meet the requirements set out in the Private Security Regulation Act, 2016 and are duly registered with the Private Security Regulatory Authority.

3. Submission of particulars of imported goods

A person, other than the owner (registrant) of recorded IP rights, seeking to import any goods into Kenya shall, in addition to any other requirements under any written law, notify the ACA of the intention to make such importation by way of a prescribed form accompanied by the prescribed fee.

4. Change of ownership

Where there is a change of ownership of the IP and the new owner wishes to continue with the recordation, the new owner shall immediately make an application to the ACA to do so. Such application shall be made by way of a prescribed form accompanied by the prescribed fee. Should the new owner wish to discontinue with the recordation, the new owner is required to notify the ACA within a period of 30 days of the date of change of ownership of the IP right.

5. Change of name

Where the owner of the recorded IP right changes its name and wishes to continue with the recordation of the IP right, the owner shall immediately notify the ACA of the change of name by way of the prescribed form accompanied by the prescribed fee.

6. Renewal of recordation

The recordation of an IP right is valid for a period of one year from the date of approval of the application for recordation or the current registration period, whichever is shorter. 

An owner of an IP right who wishes to renew its recordal is required to file an application for the renewal of the recordal 30 days prior to the expiration of the current recordation.

An application for renewal of recordation shall be accompanied by:

• a copy of the certificate of registration in respect of the IP right, duly certified by the registering authority showing the title to the IP right to be in the name of the applicant;
• a statement describing any change of ownership or in the name of the owner and any change of addresses of the owners and places of manufacture; and
• the prescribed fee.

7. Fees for recordation

The official fees payable to the ACA for the recordation of IP rights are as follows:

8. Anti-counterfeit device and ACA’s power to seize and destroy goods

The ACA may, after satisfying itself that imported goods have complied with the requirements for recordation set out above, issue to the importer of goods a certification mark in the form of an anti-counterfeit security device at a prescribed fee.

The ACA has been granted power to seize and destroy any goods originally imported into Kenya but found within Kenya that do not bear the anti-counterfeit device.

9. Register of recorded IP rights, searches and copies of documents

The ACA is required to maintain a register of all recorded IP rights.

Any person who wishes to establish the particulars of any recorded IP right may make an application to the ACA for an official search by way of the prescribed form accompanied by the prescribed fee.

Any person who wishes to obtain a copy of any document submitted to the ACA for purposes of the recordation process may apply to the ACA by way of the prescribed form accompanied by the prescribed fee.

Offences and penalties

As noted above, it is now a criminal offence under the Anti-Counterfeit Act for any person to import into Kenya any goods or items bearing a trademark, trade name or copyright that has not been recorded with the ACA. 

The following are also offences under the Anti-Counterfeit Act:

• failure to declare the IP rights subsisting in any goods being imported into Kenya;
• importing into Kenya, in the course of trade, any goods or items that are unbranded, save for raw materials; and
• falsely declaring the IP rights subsisting in any goods being imported into Kenya.

A first-time offender of any of the offences mentioned above is liable on conviction to imprisonment for a term not exceeding five years, or to a fine not less than three times the value of the prevailing retail price of the goods in question, or both.

A second-time offender is liable on conviction to imprisonment for a term not exceeding 15 years, or to a fine not less that five times the value of the prevailing retail price of the goods in question, or both.

Way forward

Given the heavy criminal law and financial consequences that may result from failure to undertake the aforesaid recordation of IP rights processes, we strongly advise brand owners and importers of goods into Kenya to comply urgently with the recordation requirements.

Our team at Dentons Hamilton Harrison & Mathews would be happy to provide any further information or clarifications on the above matters and to assist in the filing of the required recordals. In this regard, please contact: Daniel Wanjau and David Wambugu.