Kenya

In 2017, potential investors in Kenya were holding back; for one thing, there was considerable uncertainty surrounding the country’s general election. However, in 2018 the economy picked up, spelling good news for local trademark practitioners. IP awareness in Kenya is increasing, which is another positive, but on the downside, the Kenyan Industrial Property Institute continues to suffer from a lack of personnel and technology. The office is reportedly moving to new premises, which practitioners hope will give it added momentum to bring about improvements. In May 2018 the High Court of Kenya rendered a judgment in Sony Corporation v Sony Holdings Limited, which caused considerable consternation among major brand owners. Sony Corporation opposed applications made by Sony Holdings Limited on the basis that it was the owner of the Sony brand which was registered as a well-known trademark in Kenya; however, the opposition was dismissed. What is important to note though, is that the High Court disagreed with the trademark office and found that the registrar was wrong to allow Sony Holding’s mark in the same classes in which Sony Corporation’s mark was registered – this should provide comfort to owners of well-known marks.

Firms

  • Bowmans (Coulson Harney LLP) 
  • Iseme, Kamau & Maema Advocates
  • Kaplan & Stratton Advocates
  • Anjarwalla & Khanna
  • CFL Advocates
  • Hamilton Harrison & Mathews
  • Simba & Simba Advocates

Anjarwalla & Khanna

Kenya’s largest corporate law firm, Anjarwalla & Khanna operates exceptionally well when it comes to intellectual property, providing top-rate advice on all aspects of the protection, enforcement and monetisation of trademark rights. The set is a discerning choice for multinationals seeking pan-African IP solutions, thanks to its technologically sophisticated workflow systems and excellent foreign network; it also manages and drives the expansion of the award-winning Africa Legal Network. Leading the IP group is experienced high court advocate and commercially attuned lawyer Anne Kiunuhe. Her innovative strategies work wonders for companies launching exciting new product lines while her speed and precision are just the ticket for those embarking on major continent-wide trademark registration projects; acting for the Eastern and Southern African Trade and Development Bank (formerly PTA Bank) on a nine jurisdiction-plus Madrid trademark filing programme was a notable recent highlight. Invaluable support is furnished by “highly skilled” senior associate Shem Otanga. Thanks to his extensive writing efforts and engagement with INTA and the World IP Forum, he has cultivated excellent legal knowledge and networking ability, as well as broad business horizons.

Bowmans (Coulson Harney LLP) 

Prolific in trademark and patent filings locally and regionally, this ensemble also has the most Madrid filing experience of any outfit in Kenya; wherever IP protection is needed, Bowmans delivers assuredly. The firm matches this prosecution dexterity with great proficiency in IP litigation; it advocates with distinction at the High Court and Court of Appeal and devises swift and decisive anti-counterfeiting measures that put the fear into forgers. In recognition of its contentious nous, Bowmans has a new name in the WTR 1000 rankings this year in Terry Mwango. She has been acting for top generic drug company Cipla in IP actions before the Kenyan Pharmacy & Poisons Board and the Anti-Counterfeit Agency. With her on this is thoroughbred IP lawyer John Syekei, who provides the IP group with dynamic and inspirational leadership. He knows the lay of the land in East Africa better than anyone and runs a tight ship on the filing front. He is also one of the country’s best when it comes to IP-driven transactions, having recently handled a major cross-border brand migration in a large M&A deal acting on behalf of Kansai Plascon African – a groundbreaking piece of work for a Kenya-based lawyer. Syekei is also adept in the courtroom. Another name to commit to memory from this accomplished crew is head of trademarks David Opijah, an all-round brand strategist who is in hot demand for opinions.

CFL Advocates

Significant growth in terms of regional IP practice is a notable recent storyline in CFL Advocates’ narrative; the firm has conscientiously cultivated its East Africa portfolio management capabilities and now ranks as one of the best for cross-border mandates. CFL also stands out for its ability to overcome unfavourable decisions issued by the Kenyan trademark office; clients are never disheartened when things do not go their way initially, knowing that Lorna Mbatia’s tenacity and powers of persuasion will carry the day. Mbatia, who takes charge of the IP department, is one of only five people to have been recommended in every edition of the WTR 1000 since 2012; she is super consistent in providing quality counsel and a quick, unfussy client service.

Hamilton Harrison & Mathews

Venerable full-service player Hamilton Harrison & Mathews – which recently combined with Dentons – has a rich tradition in intellectual property and maintains a robust standalone IP practice catering to a swathe of prestigious international rights holders. The practitioners here showcase an exceptional understanding of black-letter law, but also never take their eye off the ball when it comes to customer service – their turnaround times on trademark filings are some of the fastest around, even when the instructions are voluminous. Seasoned lawyer Daniel Wanjau Muriu keeps a steady hand on the tiller. His skillset is extremely broad, encompassing not only intellectual property but also corporate and commercial law, which makes him a veritable one-stop shop for companies investing in Kenya and Africa. He has a frequent running mate in associate Peter Kamero, one of the market’s rising stars. The pair have recently been acting for Brandstock Legal Services on bulky filing projects, managing Merck’s trademark portfolio in Kenya and prosecuting applications for Luxottica. Handling administrative and court disputes with poise, the team can ensure safe passage for clients in choppy waters; the top litigator on deck is Kiragu Kimani, who has sharpened his strategic instincts to a fine point over the course of nearly three decades.

Iseme, Kamau & Maema Advocates

The practitioners at Iseme, Kamau & Maema are expert problem solvers – they analyse cases with an exceptional eye for detail before providing opinions and guidance that enable clients to move forward with their business. Testament to this, many come here for second opinions and to check on the fidelity of advice they have received from other service providers. The firm is also distinguished by the quality of its East Africa solutions, instrumental regarding which is its alliance with DLA Piper. It helps, of course, having William Maema in the driving seat. A sensible pragmatist who likes to be closely involved in matters – and not just a relationship partner to his clients – Maema is a safe pair of hands. That is not to say he is afraid of pushing the boat out – he draws on abundant experience and internationally attuned knowledge to constantly advance the state of IP practice at home. In fact, he is influential in developing IP law across the region and sits on INTA’s Africa Global Advisory Council. Maema has an excellent right hand in senior associate Christine Njau. Njau performs adroitly in contentious administrative proceedings and is also a noted domain name expert.

Kaplan & Stratton Advocates

Kaplan & Stratton is admired for its “vast trademark experience” and envied by peers for its “large and outstanding client base, acquired over almost a century of IP practice”. In Peter Hime the firm employs the country’s leading IP, licensing and franchising authority. Hime qualified as a Kenyan advocate in 1970 and has been fielding a broad range of trademark, IP and general commercial mandates ever since. He is flanked by IP protection specialist Patrick Ikimire, who has an excellent record prosecuting trademarks and patents to grant, and Sam Wainaina, a generalist with a replete knowledge of trademark law.

Simba & Simba Advocates

Nothing in intellectual property is off limits for Simba & Simba; the commercial firm is comfortable protecting trademarks, patents, copyrights and designs, proficient at enforcing these rights and adept at enabling clients to make the most of their intangible assets. Benard Murunga sets the tone here. The commercial law department chief is not only a trademark expert; he is a brands doyen who understands how to help companies stand out in the marketplace. To his great credit, he has done much to cultivate IP awareness in Kenya for the benefit of all stakeholders. Just like Murunga, Perpetua Mwangi is well versed in the art of advocacy. She handled one of the country’s first litigations over a geographical indication – experience which has steeled her for anything else untested in Kenya.

Other recommended experts

James Gichachi is an accomplished high court advocate and the leader of Gichachi & Company Advocates. His experience in intellectual property goes way back to the mid-1980s, when he took charge of HH&M’s IP cases; he has been putting out infringement fires ever since.

Individuals

  • Peter J Hime - Kaplan & Stratton Advocates
  • William I Maema - Iseme, Kamau & Maema Advocates
  • John Syekei - Bowmans (Coulson Harney LLP)
  • James Gichachi - Gichachi & Company Advocates
  • Patrick Ikimire - Kaplan & Stratton Advocates
  • Peter Kamero - Hamilton Harrison & Mathews
  • Kiragu Kimani - Hamilton Harrison & Mathews
  • Anne Kiunuhe - Anjarwalla & Khanna
  • Lorna Mbatia - CFL Advocates
  • Benard Murunga - Simba & Simba Advocates
  • Perpetua Mwangi - Simba & Simba Advocates
  • Terry Mwango - Bowmans (Coulson Harney LLP)
  • Christine Njau - Iseme, Kamau & Maema Advocates
  • David Opijah - Bowmans (Coulson Harney LLP)
  • Shem Otanga - Anjarwalla & Khanna
  • Sam Wainaina - Kaplan & Stratton Advocates
  • Daniel Wanjau Muriu - Hamilton Harrison & Mathews