The Anti-Counterfeit (Recordation) Regulations and the Anti-Counterfeit (Amendment) Regulations, 2021
The Cabinet Secretary for Industrialization, Trade and Enterprise Development of Kenya published the Anti-Counterfeit (Recordation) Regulations in July of 2021. The Regulations provide for the recordal of intellectual property rights with the Kenyan Anti-Counterfeit Authority (ACA) in relation to the import of goods bearing those intellectual property rights.
The Regulations enable the ACA to readily identify the true proprietors of intellectual property rights and, thereby, halt the unauthorised importation of intellectual property-related goods. Finally, on 26 April 2022, the ACA issued a public notice in relation to the recordal of imported IP-related goods with effect from 1 July 2022 which was subsequently extended to 1 January 2023.
In short, an IP owner who imports goods into Kenya is now required to register its IP rights separately with the ACA. Failure to register with the ACA will be an offence. As of 1 January 2023 it will be an offence to import goods bearing IP that has not been recorded. Such goods will be seized and the importers prosecuted. Firstly, owners of intellectual property rights applied to imported goods are mandated to record their IP rights with the ACA. Secondly, the ACA mandated that importers of goods bearing IP rights are to declare the particulars of the those IP rights. How do these expectations translate into practice and what is the relevant requirements for IP owners and importers?
Recordal by IP owners
In relation to the imported goods, the owner of the IP rights, his/her authorised agent, or licensee may apply for the recordal in the prescribed Form ACA1B and should be accompanied by the following documents:
- Completed ACA1B form;
- Original signed Power of Attorney;
- Copies of the certificate of registration certified by the registering authority indicating title in the present name of the applicant; and
- Payment of the prescribed fees
Declaration by Kenyan Importers
As stated above, importers of the relevant goods bearing the registered IP rights are required to declare the particulars of the IP rights as applied to those goods. As an IP owner with existing distribution channels, it may be appropriate to inform present Kenyan importers of their duty to make the declarations to prevent foreseeable penalties. The following documents are required in this regard:
- Completed ACA2B form. See example attached hereto.
- Certified copies of registration of IP rights or information furnishing authorship or creation;
- Payment of the prescribed fee
Renewal of recordal
An application for the renewal of the recordation is to be made no later than 30 days before the expiration of the present recordal period on the ACA6B and accompanied by the following documents:
- Copy of certificate stating the status of the registration certified by the registering authority and indicting the title in the name of the applicant;
- Statement indicating any change of ownership, name of owner, and/or any changes of address of owner or places of manufacture; and
- Payment of prescribed fee
Failure to comply
Parties who fail to comply with these requirements commit a criminal offence and may be subject to:
- Imprisonment up to fifteen years;
- Fines up to five times the retail value of each article implicated in the specific act of dealing; or
- Both imprisonment and the imposition of a fine.
The Anti-Counterfeit (Recordation) Regulations represent a bold move by Kenyan authorities to curb unauthorised importation of IP-related goods convictions are bolstered by the imposition of severe criminal penalties for offenders. Considering the penalties, it is therefore imperative that IP owners and their associated Kenyan distribution channels ensure they comply with the Regulations.
We advise our clients to adhere to the Regulation and to contact us with regard to any uncertainty surrounding their Intellectual Property right in Kenya.