The Statute Law (miscellaneous amendments) Bill, 2018 (“the Bill”) has proposed amendments to various intellectual property (IP) law-related statutes including the Anti Counterfeit Act, Number 13 of 2008 (“the Act”). The proposed amendments will have far reaching implications on the registration, regulation and protection of intellectual property rights. Some of the proposed amendments are as discussed herein.
The Anti-Counterfeit Agency, whose mandate is to oversee the fight of counterfeit trade in Kenya, is set to be upgraded from an Agency to an Authority to be known as the Anti-counterfeit Authority (the “Authority”). Though such an upgrade is expected to result in a more powerful body, the Bill does not vest more powers on the Authority as would be expected but it does broaden its functions to include advising the government through the Cabinet Secretary on various matters and carrying out of research, studies and inquiries into matters relating to counterfeiting and protection of intellectual property rights.
The Bill further introduces new definitions under section 2 such as the definitions of a consumer and counterfeit mark. The new definition of a consumer should be read together with the amendment to section 33 which allows a consumer or purchaser of goods to lodge a complaint with the executive director where he/she has reasonable belief to suspect that an offence has been, is being or is likely to be committed. The definition of a counterfeit mark on the other hand is broad enough to cover any act or omission likely to constitute an offence under the Act.
Another interesting amendment is the introduction of a new provision; section 16 (3A) which sets the limitation period of bringing an action against the Authority for alleged damage to or loss of any goods due to wrongful seizure, removal or detention of goods alleged to be counterfeit at twelve (12) months. This means that any person wishing to bring an action against the Authority will be expected to act swiftly in exercising their right otherwise they will be locked out of the gates of justice. This proposal seeks to reduce the statutory periods provided under the Limitation of Actions Act, CAP 22, Laws of Kenya.
In addition, the bill seeks to import the provisions of Part IV of the Government Proceedings Act to the execution of any judgement, decree or order against the Authority issued by any court, tribunal or competent authority. This means that in executing any judgement, decree or order against the Authority, in addition to Civil Procedure rules, 2010 and the Civil Procedure Act, CAP 21, Laws of Kenya, one will be required to adhere to the provisions of Part IV of the Government Proceedings Act which sets out the procedure to be followed when it comes to execution of judgement against the government.
The Bill goes further to expand the powers of inspectors as set out under section 23 of the Act. It gives the inspectors power to investigate any offence related or connected to counterfeiting notwithstanding that such an offence is not expressed as such under the Act. This provision gives the inspectors a lot of discretion which could be prone to abuse if no checks are put in place.
On evidence, the Bill introduces the aspect of expert evidence under section 26. It provides that; evidence of an employee of the intellectual property rights holder or its agent with demonstrable training offered by intellectual property rights holder or experience in the identification of the latter’s products shall be admissible as expert evidence. This provision seems to lower the high bar set in the Evidence Act, CAP 80 Laws of Kenya and court precedents when it comes to expert evidence. Further, the provision can be seen as intensifying the fight against counterfeit trade as expert evidence will not be hard to obtain since your own employees will be considered experts so long as they have the necessary experience and/or training.
The Bill introduces seven (7) new offences including aiding, abetting or conspiring in commission of any offence in the Act, importing into Kenya in the course of trade any goods or items that are unbranded except raw materials etc. This together with the inspectors’ extended powers under section 26 will cover any loopholes that exist in the Act in relation to punishable offences.
Another interesting amendment is the requirement that trademarks, copyrights, trade names and any other form of intellectual property rights relating to goods to be imported into Kenya irrespective of the place of registration shall be recorded with the Authority. It goes further to set out the necessary documents to accompany an application for recording and the necessary requirements that should be met. It also makes provision for the steps to be taken in case of changes of the ownership of the trademarks or change in the name of the owner of the trademarks.
However, this provision does not establish a parallel system of registration of the aforementioned intellectual property (IP) rights but only provides for recording of rights already registered and only in relation to goods to be imported to Kenya. This recordation will enable the Authority’s inspectors to easily identify genuine goods originating from the IP right holders at the points of entry and stop any suspected counterfeits from entering the country. Such practise is common in many jurisdictions including the European Union and Japan where such recordals are made with the Customs officials. The introduction of the practice in Kenya may also have the effect of improving the number of IP rights registered by the different bodies including the Kenya Industrial Property Institute, the Kenya Copyright Board and the Kenya Plant Health Inspectorate Services since such registration is a pre-requisite for the recordal with the Authority. The provision seems to have been prompted by administrative and regulatory factors.
The new amendments are intended to tighten and seal any loopholes that existed in the fight against trade in counterfeit goods and empower the offices under the Act to better carry out their functions.
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