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The Anticounterfeit Authority Recordation Process

Brand Protection, IP, IPR

This process is essentially port surveillance and screening of products using information provided by IPR owners to flag potentially counterfeit products. IPR Recordation involves the creation of a database of IPR information relating to trademarks, copyrights, trade names, or any other protected intellectual property rights, for all goods to be imported into Kenya. Goods bearing IPRs that are not recorded with ACA shall be prevented from being imported into Kenya.

According to a baseline survey done by ACA, counterfeiting in Kenya has had a great economic impact on brand owners and the overall economy. Recordation stands as a proactive measure among others to address the entry of counterfeit goods in Kenya.

There is often confusion between registering and recording Intellectual Property Rights (IPRs). While registering IPRs involves granting ownership and exclusive rights to intellectual property, IPR recordation serves the purpose of preventing counterfeit imports. This is achieved by establishing an IPR database for goods intended for importation into Kenya and utilizing the database to verify imports for counterfeit goods.

It’s important to note that Kenya, being a net importer of consumable goods, applies the recordation process to IPRs of goods being imported into the country, regardless of the jurisdiction of registration. The Anti-Counterfeit Act of 2008 acknowledges Intellectual Property Rights existing outside Kenya in its definition of counterfeiting.

The implementation of IPR Recordation is praised as a highly effective global best practice for preventing the entry of counterfeit products. Kenya is the second African nation to embrace IPR Recordation, following the Republic of South Africa, where recordation is overseen by the Companies and Intellectual Property Commission.

The legal basis for the recordation of IPR in Kenya is provided under the following sections:

1. Section 34B of the The Anti-Counterfeit Act – No. 13 of 2008

This act was enacted to prohibit trade in counterfeit goods. Organisations and regulatory bodies came together to consolidate efforts and promote inter-agency corporations to fight this thriving trade through the formation of the ACA.

2. The Anti-Counterfeit (Recordation) Regulations 2021, LN 118 of 2021

These regulations require IP owners who import goods into Kenya to record their IP with the ACA.

3. The Anti-Counterfeit (Amendment) Regulations 2021, LN 117 of 2021

The amendment to these regulations prescribes the procedure to be followed in appointing and de-registering agents selected by IP owners to act on their behalf.

 Application

Briefly put, the recording of an IP right consists of the following steps:

·       Appoint an IP owner, their authorised agent licensee, or assignee (a legal person duly appointed under the Anti-Counterfeit Act through a power of attorney and admitted as such to act on behalf of an IP owner).

·       Apply for recordation through the official online platform and specify the type of IP right (if the IP right is a registered trademark or a registered design, the relevant classes covered by the registration must be selected).

·       Indicate the details of the registration, namely the name of the IP right, registration number and expiration date (a valid certified copy of the registration certificate must be attached).

·       Add the details of the manufacturer, foreign entities, parent company, subsidiaries and licensees if any.

·       Provide the product details (including the product name and product description) and upload clear representative images of all products trading under the registered IP right, including all stock-keeping units, models and variations.

·       Payment of the applicable official fees.

·       After being duly submitted, the application will be analysed within 30 days.

·       A recordation certificate will be issued (valid for 12 months).

·       Renewals shall be paid on an annual basis.

 Responsible body

The responsible body for carrying out the recordation system and its surveillance is the ACA. Further, the ACA Integrated Management System (AIMS) was created to administer the whole recordation system and its correspondent acts (ie, maintenance, appointment of agents, request of copies of documents, and official search of the IPR database, among others).

Maintenance

The recordation shall remain valid for a period of 12 months subject to annual renewal at the cost of $50. The onus to provide proof of renewal falls on the IPR owner. In the event this maintenance fee is not paid, it is implied the ACA surveillance shall not take further effect.

Limits of the recordation

According to the regulations, the recordation is mandatory if a company wishes to import goods into Kenya; and it is unlawful to import goods for which there is no recordal. It is implicit that goods exported from Kenya do not fall into this scope.

Additionally, no recordation is required for a trademark that is used for raw materials (as these are defined as items used as ingredients in the manufacture of goods: an offence is only committed if goods are imported during trade), or a trademark that is used simply for services.

Although the regulations refer to “intellectual property rights” it does seem that the focus is trademarks, as counterfeiting is far more closely associated with trademarks than any other type of IP right.

Surveillance

The recordation system aims to prevent importation of counterfeit goods into Kenya, proactively protecting brand owners and consumers from harmful counterfeit goods. The surveillance process shall be rolled out by the ACA in phases starting with the compilation of statistics and demanding IP owners to file for recordation. Further, the ACA efforts will involve enforcement in the sense of identifying, intercepting, and destroying counterfeits.

Consequences of not recording

It is fundamental for applicants to be aware that, from January 1, 2023, it shall be an offence for any person to import into Kenya any goods or items bearing an IP right that has not been recorded with the ACA.

Furthermore, as per Section 32 of the Anti-Counterfeit Act, No.13 of 2008, it is an offence to:

·       Import into Kenya any goods or items bearing a trademark, trade name or copyright that has not been recorded;

·       Import into Kenya in the course of trade any goods or items except raw materials that are unbranded;

·       Fail to declare the quantity or the IPRs subsisting in any goods being imported into Kenya;

·       Falsely declare the quantity of, or the IPRs subsisting in, any goods being imported into Kenya.

Summary

IP registration and recordation are distinct notions. The IP recordation system is additional to, and separate from, any international or Kenyan registrations. An IP registration corresponds to a territorial right filed at, and granted by, the national official administrative entity. On the other hand, IP recordation is the process of submitting information regarding these registered rights (irrespective of their place of registration) to the ACA to intercept counterfeits of the company’s products.

Although the regulations refer to “intellectual property rights”, the focus seems to fall on trademarks, as counterfeiting is far more closely associated with trademark rights than any other IPR and tends to be easier to identify and handle.

The regulations clarify that: “it shall not be mandatory for an IP rights owner to record all the registered IPRs relating to one product”. Consequently, we believe that trademark recordation should be limited to the major or most important trademarks.

The implementation of the IP rights recordation system is a laudable measure that places Kenya one step ahead in the continuous struggle against counterfeiting.

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Brand Protection, Investigations, IP, IPR, Security

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