It is no longer news that registration of IPR with the Kenya Anti-Counterfeit Authority (ACA) is compulsory for all commercial imports in Kenya. Considering that the deadline for the implementation and enforcement of the ACA recordation regulations (1 January 2023) is rapidly approaching, the ACA has been conducting stakeholder meetings and training over the past few months. To facilitate this process, the ACA has welcomed various recommendations from interested parties, including scrutiny from a legal perspective on the practicality of the new implementation.
On 29 November 2022, the ACA issued a Public Notice advising that they will be prioritising the following categories of products;
- Alcoholic beverages
- Pharmaceuticals
- Electricals and electronics
- Apparel/clothing
- Footwear and;
- Cosmetics
This means that as of 1 January 2023, it will be an offence to import goods into Kenya, bearing trade marks or other IPRs, that have not yet been recorded with the ACA.
There is a lot of uncertainty regarding how this new implementation will affect importation. By advising IPR holders that actively import goods into Kenya, directly or through third parties, to expedite filing their trade marks with the ACA will avoid the possibility of their goods being detained.
It is important to note the ACA is currently considering the best manner to roll out the IPR recordation process without affecting the business and importation of goods.
Due to the novelty of this implementation, numerous questions have been raised by IPR owners and interested parties. Below, we have outlined a list of the frequently asked questions received over the past few months pertaining to the recordation process, together with brief answers:
Will the ACA prevent, seize or destroy unrecorded goods from entry into Kenya even if they are genuine?
The ACA is not engaged in the seizure of original goods for destruction or preventing goods from entering the marketplace, however, during the early stages of the implementation they may detain goods and follow up with the importer to ensure that the trade marks are registered accordingly with the ACA.
What will happen if we do not have trade marks registered in Kenya?
The Anti-Counterfeit Act and regulations provide protection for international registered rights, as such, the recordal can be based on a local Kenyan registered IPR, (i.e., trade mark) or an international and foreign registration.
To prove that you have a valid trade mark, the ACA requires a certified copy of the registration certificate or latest renewal certificate certified by the registering authority.
Does the WIPO certificate need to be certified?
The WIPO certificate must be certified, however, electronic certification/attestation from WIPO is sufficient.
Does one application cover all trade marks?
A single application must be filed for each trade mark, however, additional classes can be covered in the same application.
Is it necessary to provide samples or photographs of every product imported to Kenya?
The ACA requires general photographs of branded goods, clearly showing off the client’s trade mark as applied to goods for each class of interest. The photographs will be added to the database and will assist the Agency Inspectors to identify the products, bearing the trade mark.
Is it mandatory to include the details of the local agents or distributors and manufacturers?
It is recommended to record details of the business entities authorised or licensed to use the IP right in Kenya, however it is not compulsory to include these details where the IPR owner does not have local licensees and/or distributors yet.
Please note that it is mandatory to provide the details of at least one manufacturer of the goods and the ACA is strict about this requirement.
Questions on security/confidentiality of business sensitive data to be submitted to the ACA
The ACA requires the following information from the IPR owner in order to process the application: details about the product, such as the product name and description, clear representative images of all products trading under the registered IPR including all stock-keeping units (SKUs), models, and variations; a certified copy of a Kenyan or international IP registration certificate; details about the official Kenyan distributor/s, and details about the manufacturer and licensees.
Because of the sensitive nature of the information required, there is a level of discretion for including certain information, such as SKUs. Information provided should be sufficient to assist the ACA when they conduct their inspection. When data is made available on the platform, it will be censored to protect user privacy and will not include any details not already visible in the product’s packaging.
Does the mandatory recordal requirement apply to online retailers who sell directly to Kenyan consumers?
It will not be necessary for clients who operate online retail businesses to record marks depicted on goods shipped individually and directly to customers for their personal use. The imported items would be for the private use of Kenyan citizens and would not be considered commercial imports.
If you would like more information or assistance with this, please contact our brand protection team at ac@vonseidels.com
Written by Kholofelo Ramokgopa
To read our other articles concerning this topic, please see below.
https://www.vonseidels.com/news/mandatory-to-record-ip-rights-for-goods-imported-into-kenya/
