Amendments to Anti-counterfeit Act come into force

Kenya

The Statute Law (Miscellaneous Amendment) Act of 2014 has made several amendments to key statutes in Kenya, one of the statutes being the Anti-counterfeit Act (13/2008).

The Anti-counterfeit Act is a fairly new legislation which commenced in 2009 and provides for the establishment of the Anti-counterfeit Agency. The agency came into existence in June 2010 and has made fair strides in curbing counterfeit goods. Since its establishment, the agency claims to have seized goods the estimated value of which is over 650 million.

Amendments to the Anti-counterfeit Act include the deletion of “elsewhere” in the definition of 'counterfeiting'. The Anti-counterfeit Act previously defined 'counterfeiting' as “taking the following actions without the authority of the owner of the intellectual property right subsisting in Kenya or elsewhere in respect of protected goods". This amendment clarifies the function of the agency by limiting its enforcement to Kenya’s boundaries since IP rights are territorial rights.

As a matter of good corporate practice, the amendment to the Anti-counterfeit Act, Section 6(1), has seen the reduction of the Anti-counterfeit Agency board to nine members. The board will no longer consist of the managing director of the Kenya Industrial Property Institute or his representative, the managing director of the Kenya Plant Health Inspectorate Service or his representative, the executive director of the Kenya Copyright Board or his representative, the attorney-general or his representative, and the registrar of the Pharmacy and Poisons Board.

The board will consist of:

(a) a chairman appointed by the cabinet secretary from amongst the members appointed under Paragraph (h);

(b) the principal secretary in the ministry for the time being responsible for matters relating to industrialisation, or his or her representative;

(c) the principal secretary in the ministry for the time being responsible for matters relating to finance, or his or her representative;

(d) the executive director appointed under Section 10;

(e) the commissioner-general of the Kenya Revenue Authority, who may be represented by the commissioner of customs;

(f) the managing director of the Kenya Bureau of Standards;

(g) the chief executive of the Kenya Association of Manufacturers or a representative, being a person who meets the qualifications set out in Paragraph (h); and

(h) two members appointed by the cabinet secretary, not being public officers, and who hold a degree from a university recognised in Kenya and have at least 10 years' experience in matters relating to:

  • IP rights;
  • consumer protection; or
  • trade.

The above composition, however, is temporary and is subject to change should further amendments to the Anti-counterfeit Act be made. 

Other amendments include a new Sub-section 16(4), which establishes an Intellectual Property Enforcement and Co-ordination Advisory Committee. The challenge with this section is that it does not clearly state what the committee’s mandate is. Moreover, the addition of the sub-section is rather haphazard considering that Section 16 of the Anti-counterfeit Act deals with “liability for damage or loss”. It has however been clarified that the Intellectual Property Enforcement and Co-ordination Advisory Committee is meant to mirror the US Intellectual Property Enforcement Coordinator. The committee is meant to act as a joinder of the Anti-counterfeit Agency with different institutions involved in curbing counterfeit goods, such as the Kenyan police.

A welcomed addition to the Anti-counterfeit Act is Section 34A, which provides for the compounding of offences. It is noted that this amendment is to enable the settling of matters effectively and efficiently both in time and money. The section provides that, where a person has committed an offence under the Anti-counterfeit Act of which a fine is provided for, or in respect of which anything is liable to forfeiture, the executive director may order such person to pay a sum of money not exceeding the amount of the fine to which the person would be liable if he or she had been prosecuted and convicted for the offence. The executive director may order anything liable to forfeiture in connection with the offence to be forfeited. The amendments, however, provide that the executive director may exercise this power only where the accused admits to committing an offence under the Anti-counterfeit Act.

A welcomed amendment to the Anti-counterfeit Act would have been the inclusion of Rule 15 of the Anti-counterfeit Regulations 2010 into the sections of the act. This would have strengthened the powers of the Anti-counterfeit Agency as well as Kenyan Customs, as it allows an IP right owner to submit particulars of his IP right to the agency, which particulars would assist Customs and the agency in monitoring counterfeit goods.

Krystal Muindi and John Syekei, Coulson Harney, Nairobi

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