The Kenyan Anti-Counterfeiting Authority (ACA) recently reaffirmed that the businesses that export goods to Kenya must record their intellectual property rights (IPR) with the authority as of January 1, 2023—as we previously reported earlier this year. The ACA will not permit the import of genuine goods bearing any IPR that have not been recorded.
Companies importing their products into Kenya, either directly or through local subsidiaries, must record their IPR with the ACA. The application for the mandatory recordal will be processed through an online platform that is managed by the ACA, known as the Anti-Counterfeit Authority Integrated Management System (ACAIMS). This obligation will apply to all products that bear a valid IPR imported into Kenya, regardless of whether the IPR is registered in Kenya or abroad. The ACA is excluding any goods that are transiting through Kenya, along with any raw materials that are imported into the country.
Although the legislation refers to the mandatory recordal of IPR in general, we anticipate—and given the difficulty that would pose for the ACA to detect any infringements of industrial designs or patents—the ACA recordals are expected to focus mainly on trademarks. However, we would have to wait until implementation to check the practice
With that in mind, rights owners with a large trademark portfolio will have to assess which trademark to record with the ACA. In such a case, we suggest that the right owner should choose the most important trademark for the recordal, and most often this will be the house mark. It is salient to note that ACA recordation and IPR registration are two separate procedures in Kenya. To register an IPR in Kenya, applications must be filed with the Kenya Industrial Property Institute, which known locally by the acronym KIPI.
The ACA also announced that it will prioritize the enforcement of certain product categories, which include pharmaceuticals, clothing, and cosmetics, among others. The recordal, which is valid for the period of one year or the current registration period of the intellectual property right, whichever is shorter, will allow the ACA to adopt an ex-officio border system that will facilitate prompt and proactive action.
Preventative measures, such as the ACA recordal, are an important keystone that can offer strong and reliable protection for brand owners as the first line of defense. With that in mind, when planning to implement a strong enforcement strategy, brand owners must seek out a combined approach to tackle infringement or counterfeiting by utilizing all means necessary at the disposal in Kenya.
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