Kenya is one of the African frontrunners in the implementation of legislation and procedures in the ongoing fight against counterfeits and despite over a decade of unprecedented legal and organizational efforts, counterfeiting remains rife. Between October 2019 and February 2020 Kenya’s Anti-Counterfeit Authority (“ACA”) conducted a national baseline survey on illicit trade and counterfeiting. The survey revealed that counterfeits cost the country over USD900 million in tax revenue and further that over 7 500 jobs have been lost as a direct result of counterfeiting. Porous borders with Sudan, Uganda and Tanzania are just one of the factors to be considered regarding Kenya’s vulnerability to counterfeits as this may reduce the ability to detect counterfeit smuggling into and out of the country.
Remaining true to its “groundbreaker” status, in its latest bid to curb the import and export of counterfeits the ACA together with industry stakeholders have developed the Anti-Counterfeit (Recordation) Regulations (“Regulations”). The Regulations were published in the 30 July 2021 Kenya Gazette as legal notice no. 118 of 2021.
The recently published Regulations now make it compulsory for IP Rights Holders to have a Customs recordal in place for any goods coming into Kenya in which IP rights subsists or are applied. Third parties with the intention of importing goods for commercial purposes are obliged to ensure that the IP rights relating to the goods is recorded and further, to inform the ACA of their intention and the particulars of the goods. Recordations are required to be renewed annually on application to the ACA and does not occur automatically.
The ACA intends to make the recordation system fully automated and operational through a web platform, including the processing of recordation and the maintenance thereof and a record of all recorded IP rights. This is with the view of quick turnaround times and the alerting of IP Rights Holders, through their local agents when suspect counterfeit goods are encountered to prevent the goods from flowing into the Kenyan market.
IP Rights Holders are encouraged to appoint agents who will act on their behalf and expedite the recordal of their rights or any processes relating thereto. It is crucial to note that the ACA has requested agents to register with the ACA to remain informed of any developments and updates relating to the further roll out of recordation of IP Rights.
Counterfeiting is a global practice operated by organized syndicates benefitting off this illegal practice. Customs recordals are one of the legal measures in IP enforcement strategies which IP Rights Holders can utilize in the enforcement of their IP rights. Considering the porous borders of Kenya with its neighboring countries it goes without say that this formal Customs Recordation System will possibly increase the quantities of counterfeit goods seized by Kenyan authorities and details of those involved counterfeiting activities and will aid in the gathering of intel on counterfeiting syndicates for use in planned actions against counterfeits.
By Sibongile Dee, Attorney, Trademark Department, reviewed by Vanessa Ferguson, Anti-Counterfeiting and Trademark Attorney.
