Kenyan practitioners are divided about the state of the country’s trademark system: some emphasise that progress has been made in recent years and that the jurisdiction compares well to others in the region, but many complain about inefficiency and poor communications at the Trademark Registry, as well as a lack of specialist knowledge among the judiciary. However, local lawyers seem united in welcoming the news of Sylvance Sange’s appointment as managing director of the Kenyan Institute of Intellectual Property in 2017. Despite still being in the early stages of his three-year tenure, Sange is garnering tentative praise from his fellow professionals for his reformist vision and willingness to listen to concerns. The digitalisation of the registry is what most trademark professionals want to see. Such changes are being discussed, but observers doubt that a fully computerised system is imminent. On a different note, the country’s trademark practitioners are delighted by the greater awareness of IP issues among Kenyan companies and domestic enterprises – some of the most vibrant and innovative in Africa – which are becoming an increasingly important source of work for local firms.
Anjarwalla & Khanna
Making its sophomore appearance in the WTR 1000, commercial law stalwart Anjarwalla & Khanna continues to establish itself as one of the country’s leading trademark practices. Now boasting a 15-strong team, its fast-growing IP cohort handles the most demanding portfolios with poise. As a part of the close-knit Africa Legal Network, the firm is also a go-to for continent-wide instructions. “Thorough and meticulous with quick turnaround times”, Anne Kiunuhe provides assured leadership, working adeptly across the contentious/non-contentious divide. She recently oversaw a trademark-rich transaction for Helios Investment Partners. A dab hand at prosecution, her colleague Shem Otanga has made a good impression on clients since joining from Hamilton Harrison & Mathews in 2016: “He is responsive, writes succinctly and is a pleasure to work with”, enthuses one patron. The pair recently undertook a major international rebranding project on behalf of Eastern and Southern African Trade Development Bank.
Drawing on substantial resources, gold-tiered firm Bowmans combines a stellar domestic trademark practice with exceptional international capabilities. “Its dynamic and deeply experienced team is among the best in the country; it shows great professionalism and knows how to get things done.” Captaining the side is expert practitioner John Syekei, a “hardworking and aggressive lawyer, with a complete IP skill-set”. Well-connected and clued-up on developments across Africa, he is a trusted guide to brand protection throughout the region. Syekei is supported by David Opijah, who demonstrates a deft touch in the enforcement and commercialisation of intangible assets.
Clients extol the “promptness, dependability, reasonable pricing and clear communication” of the CFL Advocates IP team, which has retained a flexible, boutique-like approach despite significant growth in recent years. Esteemed for its procurement of watertight trademarks, the versatile set also brings a steady hand to complex negotiations and excels in opposition and cancellation procedures. An office in Rwanda extends the firm’s reach into central Africa. Driving the success of the practice is commercial law whizz Lorna Mbatia, a skilled relationship builder with a panoramic perspective on all aspects of brand protection.
Hamilton Harrison & Mathews
General service leviathan Hamilton Harrison & Mathews cuts an impressive figure on the Kenyan IP market. As one client avers: “It stands far above the crowd and is not only my first choice in the country, by a distance, but also one of my most trusted firms in Africa as a whole. The team is reliable and responsive, provides clear and concise advice, and proactively flags up problems ahead of time, which is crucial.” Helming this crack squad, Daniel Wanjau Muriu “works quickly but always to a high standard; he is very professional and writes superbly”. Top-notch prosecution is the mainstay of his practice; Merck recently entrusted him with over 80 new trademark applications. Of late he has also advised the Commercial Bank of Africa on a pan-African portfolio development project. When contentious circumstances arise, Kiragu Kimani is an essential contact: formidable in the courtroom, the 30-year veteran is also a pre-eminent anti-counterfeiter. Having joined the firm in 2016, up-and-comer Peter Kamero provides additional firepower and works consummately on all matters throughout the trademark lifecycle.
A one-stop shop for brand management, Iseme, Kamau & Maema provides a “consistently high-quality service” to a slew of big-name companies; “proactive, timely and cooperative, its team also shows an extensive knowledge of intellectual property”. Lynchpin of the practice William Maema “never fails his clients”; lauded for his “practical and academic prowess”, the seasoned professional “really knows his stuff and is always well prepared”. A sage counsellor on trademark registration issues, Maema is also active in opposition and expungement proceedings. Flanking him is rising star Christine Njau, who features in the WTR 1000 for the second time this year.
Kaplan & Stratton Advocates
Boasting a rich history in intellectual property, Kaplan & Stratton remains at the zenith of the Kenyan trademark market; popular with blue-chip brands, its comprehensive offering also receives effusive praise from peers. The firm “has a huge reputation – which it lives up to. Vastly experienced and possessing unmatched know-how, its practitioners also have integrity and will tell a client when they do not have a good case”. Pioneering lawyer Peter Hime has been at the forefront of soft IP law in the country for over four decades; the wise professional “understands the issues in granular detail and knows how to get results. He’s still the leader of the pack in Kenya”. Also commended for his profound legal knowledge is Patrick Ikimire, who stands out for his adroit licensing and anti-counterfeiting work. Commercially astute adviser Sam Wainaina is another pillar of the firm.
Simba & Simba Advocates
Appearing for the first time in the WTR 1000, Simba & Simba is making waves with its rapidly growing IP department: “unparalleled in its level of service, the firm is extremely responsive, attentive and swift”, enthuses one multinational brand owner. Tried and tested in trademark prosecution, its team is increasingly called on to tackle disputes. The side is currently defending the NBA in a spat with Monster Energy over the registration of the Toronto Raptors’ ‘claw marks’ brand, and also handling one of Kenya’s first geographical indication cases. “With a wealth of experience in IP matters”, skipper Benard Murunga “is especially knowledgeable about trademark registrations and manages prosecution seamlessly across Africa”. His colleague Perpetua Mwangi – a WTR 1000 debutante – has also struck a chord with patrons: “She always gives attention to your specific needs, prepares documents meticulously and provides clear and perceptive advice on the available options.”
Other recommended expertsHigh-flier James Gichachi has handled every type of trademark matter in his illustrious 30-year career; the well-rounded commercial lawyer leads the line at Gichachi & Company Advocates. Captaining the side at Ndungu Njoroge & Kwach Advocates, Eliot Njoroge takes the most problematic IP mandates in his stride.
- Peter J Hime - Kaplan & Stratton Advocates
- William I Maema - Iseme, Kamau & Maema Advocates
- John Syekei - Bowmans Kenya (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
- Christine Njau - Iseme, Kamau & Maema Advocates
- Eliot Njoroge - Ndungu Njoroge & Kwach Advocates
- David Opijah - Bowmans Kenya (Coulson Harney LLP)
- Shem Otanga - Anjarwalla & Khanna
- Sam Wainaina - Kaplan & Stratton Advocates
- Daniel Wanjau Muriu - Hamilton Harrison & Mathews