In 2021, the mandatory recording of Intellectual Property rights (IPRs) was introduced in Kenya. In a bid to fight against counterfeiting in the country, the exercise requires mandatory recording of IPRs such as trademarks with the Kenyan Anti-Counterfeit Authority (“ACA”) for all imported goods. Through this reform, goods bearing IPRs that are not recorded in the ACA IPR database will be prevented from being imported into Kenya.
Legal Background:
The main statute addressing the counterfeit goods is the Anti-Counterfeit Act, 2008 (the Act). From the Act, came the following regulations that govern the process of recordation:
- The Anti-Counterfeit Regulations, 2010
- The Anti-Counterfeit (Recordation) Regulations, 2021
Key Points from the Act and Regulations:
- The Anti-Counterfeit (Recordation) Regulations 2021 require that brand owners who import branded goods into Kenya must record these brands with the ACA.
- The Anti-Counterfeit Act provides that trademarks relating to goods to be imported into Kenya, irrespective of the place of registration, shall be recorded with the ACA. Brands relating to goods manufactured in Kenya don’t have to be recorded and may be recorded voluntarily and free of charge.
- The Anti-Counterfeit Act makes it an offence to import into Kenya in the course of trade, any goods or items bearing a trademark, trade name or copyright that has not been recorded with the ACA. It is also an offence to import into Kenya, in the course of trade, any goods or items except raw materials that are unbranded.
There is a distinction to be noted between importers and trademark owners. The obligation to record brands or trademarks rests with the brand or trademark owner. An importer is only required to declare the brand relating to the goods they intend to import into Kenya. The other key distinction is that while an importer shall have to pay a fee of USD 20 for each application in respect of each imported consignment of branded goods, a brand owner who has recorded his brands is exempt from this fee. Raw materials, bulk goods, other industrial inputs, machinery parts and used goods shall also be exempted from the payment process.
The recordation process covers a number of processes: the application for recordation, renewal, declaration of IPR particulars for goods being imported into Kenya and searching the recordation database. Currently the process is ongoing through the ACA Public System.
The deadline for the recordation exercise was initially set at 1st July 2022, however, the deadline was extended to 1st January 2023. On the 29th November 2022, the ACA issued a public notice, (Public notice no. 3/2022), notifying the public that the ACA was set to begin the implementation of recordation of IPRs for the following imported goods from 1st January 2023:
- Alcoholic beverages
- Electrical and electronics
- Apparel
- Footwear
- Cosmetics
On the 23rd of December 2022, the ACA issued another public notice (Public notice no. 4/2022) overturning the public notice no. 3/22. The notice stated that the ACA has scaled down the sectors that were set for implementation of the recordation exercise to the electrical and electronic sectors only under Chapter 86 of the East African Community Customs Union – Common External Tariff 2022 version.
While some confusion maybe expected from the coordination of agencies such as KEBS and the ACA, it is advised that importers lodge the recordation applications as soon as possible to avoid any unforeseen delays.
How we can help
At Agema Analysts, our Partner, Divinah Ongaki is a duly registered IPR Agent with the Anti-Counterfeit Authority and can provide further advise on the process of recordation. For further consultation, please feel free to get in touch with our team below:
