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Custom Recordal of IPRs in Kenya


Custom Recordal of IPRs
Yes, it is a fairly new amendment, which came into effect in 2019. Therefore, commenting on the effectiveness of the same at such an early stage might carry certain disadvantages.
The Anti-Counterfeiting Act No. 13 of 2008 forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Kenya.
Custom Recordal of IPRs is effective both on the import and export of goods.
The Authority’s inspectors have been granted additional powers and can now do the following:
a. Investigate any offence related to counterfeiting even though the offence is not defined under the Anti-Counterfeit Act;
b. Exercise similar powers as customs officers concerning the importation of counterfeit goods under the East African Community Customs Management Act;
c. With the appropriate warrant, enter any premises where it is suspected that an offence under the Anti-Counterfeit Act is being or is about to be committed (the owner of the premises does not have to be present, but the inspectors must leave the premises as secure as they found them); and
d. Receive and act on consumer complaints as consumers are now allowed to lodge complaints.
The rights holders have to apply to the Commissioner of Customs in the form of an application for the seizure of suspected counterfeit goods and create presumptions in favour of the rights holder.
An application to record one or more trademarks should be in writing in the prescribed manner and addressed to the Agency and should include the following information—
(a) The name, complete business address, and citizenship of the trademark owner or owners (if a partnership, the citizenship of each partner; if an association or corporation, the state, country, or other political jurisdiction within which it was organized, incorporated, or created);
(b) The places of manufacture of goods bearing the recorded trademark;
(c) The sample of the trademarked goods or a sufficient digital photographic representation of the trademarked goods with appropriate details for identification and differentiation from any counterfeits;
(d) The name and principal business address of each foreign person or business entity authorized or licensed to use the trademark and a statement as to the use authorized; and
(e) The identity of any parent or subsidiary company or other foreign company under common ownership or control, which uses the trademark abroad.
The Commissioner or Executive Director shall consider and deal with an application within 03 working days and may grant the application if satisfied on reasonable grounds that—
(a) The goods claimed to be protected are prima facie protected goods;
(b) The intellectual property right, the subject matter of which relates to the protected goods, prima facie subsists; and
(c) The applicant prima facie is the owner of that intellectual property right.
Yes, the system is centralized.
Forms Purpose KSh.
1 FORM ACA 3 Application for copies of statements per page 50
Application fees for certification per document 1,000
2FORM ACA 4 Application for inspection of seized goods 2,000
3 FORM ACA 5 Application for samples 5,000
4 FORM ACA 8 Laying of a complaint 10,000
5 FORM ACA 10 Application to the Commissioner to seize suspected counterfeit goods 10,000
6 FORM ACA 13 Application for search 1,000
7 FORM ACA 15 Power of Attorney 1,000
*In cases where the trademark is registered in more than one class, there is a fee for each class.
The Customs Recordal Application will be valid for a period of 01 year effective from the date of application, and it will be necessary to file a renewal application at least 30 days before the expiry date. An application for renewal must again be accompanied by a copy of the certificate of registration and the prescribed fee.
The customs authority suspends the goods on suspecting that the goods may be infringing in nature. The goods are detained until the final decision concerning their nature is made.
It is the infringer who pays the cost; however, any person who suffers damage or loss caused by wrongful seizure, removal, or detention of goods alleged to be counterfeit goods pursuant to an application made to the Commissioner or Executive Director shall be entitled to claim compensation for the damage or loss suffered by him against the applicant - provided that compensation shall only be paid where the application for seizure and detention was false or negligent or made in bad faith.

The customs authority/inspector seizing the counterfeit goods acts as follows:
a) Forthwith seal, clearly identify and categorize the goods and prepare, in quadruplicate, an inventory of such goods in the prescribed form and cause the person from whom the goods are seized to check the inventory for correctness;
b) Furnish one copy of the inventory to the person from whom the goods are seized and another to the complainant, if any, within 05 working days after the seizure;
c) As soon as possible, remove the goods, if transportable, to a counterfeit goods depot for safe storage, or, if not capable of being removed or transported, declare the goods to have been seized insitu, and seal off or seal and lock up the goods or place them underguard at the place where they were found, and thereupon that place should be deemed to be a counterfeit goods depot; and
d) By a written notice, inform the following persons of the action taken by the inspector and the address of the counterfeit goods depot where the seized goods are kept—
(i) The person from whom those goods are seized; and
(ii) Either the complainant, where the inspector exercised his powers pursuant to a complaint laid; or
(iii) The person who, concerning those goods, qualifies to be a complainant, but who didn’t lay a complaint at the time when the inspector exercised those powers on his own initiative.
Any person aggrieved by the seizure of goods may, at any time, apply to a court of competent jurisdiction for a determination that the seized goods are not counterfeit goods and for an order that they be returned to him. If no such request is made, there shall be no need to initiate a court proceeding to seek an order of the court.
The Custom Recordation system was in debate since long before it was finally introduced through the mode of an amendment in the Anti-Counterfeiting Act. It will take some time to administer smoothly and control infringing exported or imported goods effectively.
The court may require the submission of other documents as well to meet the documentary requirements.
The court may grant or refuse the relief applied and make such order as it deems fit in the circumstances, including an order as to the payment of damages and costs.