Improving the country’s ease of doing business – and therefore strengthening its IP environment – has been at the forefront of the Kenyan government’s agenda. In particular, the Ministry of Industry, Trade and Cooperatives has implemented a new IP policy to help achieve its UN Sustainable Development Goals by 2030. In line with this wider strategy to increase IP awareness and improve IP infrastructure, extra effort has gone into cultivating greater expertise in trademarks among the judiciary and supporting the Kenyan Industrial Property Institute (KIPI), which recently moved to new, more modern premises. In addition, discussions have been taking place regarding the prospect of introducing online filing at the KIPI, which would be a welcome upgrade of the current paper-based system. Concrete steps are yet to be taken in this direction, however, and practitioners continue to report a substantial backlog in administrative trademark proceedings.
Anjarwalla & Khanna
Ever-growing Anjarwalla & Khanna is not only East Africa’s largest corporate firm – housing over 100 lawyers under one roof – it is also the founding member of the award-winning African Legal Network, making it ideally placed to deliver high-quality services across the whole continent. At this well-integrated organisation, the IP team works closely with neighbouring departments, including the most recently added forensics branch, giving it an edge in multilayered and complex cases, as well as difficult anti-counterfeiting investigations. Co-heads of intellectual property Anne Kiunuhe and Akash Devani provide strong leadership and keep the machine well oiled. Kiunuhe blends commercial law and IP expertise, putting her at a distinct advantage in transactional IP settings, although she is best described as an assured IP all-rounder. Through her extensive publishing activities, she spreads her knowledge generously with all stakeholders in the African IP market. Together with senior associate Shem Otanga, she receives a great write-up from clients: “Anne and Shem are very responsive, knowledgeable and skilled. They provide well-rounded and considered advice on the protection of brands in East Africa and are extremely prompt and thorough in all their communications.” Devani makes his debut in the WTR 1000 this year in recognition of his expertise in getting IP-rich cross-border deals over the line.
Full-service Bowmans boasts a first-rate IP practice. Known for its high commercial awareness and ability to get in-sync with clients on a business level, the firm’s “knowledgeable, thorough and experienced” practitioners offer tailored strategic advice to household brands. Testament to the sophistication of its practice, the group has recently assisted Tiffany & Co with respect to an opposition; represented the Scotch Whisky Association and Diageo in a passing-off case against Africa Spirits Limited; and acted for Barclays Kenya in a case against ABSA Kenya that will affect the relationship between trademark ownership and company names. Taking lead roles on the most important matters are John Syekei, Terry Mwango and David Opijah. Head of the IP practice, Syekei is undoubtedly one of the most dynamic and skilled trademark practitioners not just in Kenya, but also in the wider continent. Clients trust him to get things done, from whipping a portfolio into tip-top shape to litigating difficult cases in the High Court and Court of Appeal. Mwango is a tried-and-tested advocate and top litigator, while Opijah is the standout when it comes to trademark searching, clearance and prosecution and IP transactions.
CFL’s IP department is on an upwards trajectory and has recently expanded its reach in challenging territories including Somalia, Somaliland, South Sudan, Rwanda and Burundi. Its effectiveness at safeguarding IP rights regionally is the set’s unique selling point, although the promptness and precision of its service also stands out. Clients are quick to sing the group’s praise: “CFL’s IP team is amazing in terms of responsiveness, diligence, proactivity and attention to detail. It provides an exceptional service through and through.” Leading the way is Lorna Mbatia, a passionate advocate for stronger IP protection in the region who delivers “five-star quality” without exception. One source comments: “In some jurisdictions, it is not unusual to find unpredictable obstacles when it comes to trademark filling; Lorna overcomes them swiftly every time.”
For Hamilton Harrison & Matthews, 2019 was a banner year: it officially joined the Dentons family in the first trimester, following which it became the primary point of contact for IP matters for Dentons clients not just in Kenya, but also in East Africa. To describe the team in Nairobi as busy would therefore be an understatement, but you will not find it dropping the ball on any file. It certainly helps that the KIPI is just a stone’s throw away – a real advantage in terms of speedy filing in a paper-based system. IP group head Daniel Wanjau Muriu and his colleagues garner excellent client feedback: “Dr Muriu and his team are knowledgeable, communicate clearly and in timely fashion, and provide regular and complete updates, ensuring we do not miss any deadlines. Despite working in a high-profile firm, they handle all matters – including smaller jobs – with the same exceptional level of diligence. It is always a fantastic experience working with the team.” Worthy of special mention are Kiragu Kimani and Peter Kamero: Kimani is a litigation partner and experienced advocate with keen strategic vision. Kamero frequently links up with Muriu in the service of prestigious clients such as Merck and the Commercial Bank of Africa Limited, which they assist with trademark prosecution, though he is more than happy to take sole responsibility for such matters – something he does regularly.
Iseme, Kamau & Maema Advocates
In the words of one client: “IKM is Kenya’s best in intellectual property. The firm handles trademark registrations, industrial design matters and IP litigation extremely diligently and its professionals are approachable and ready for a call at any time.” Attracted by a first-class service, clients are coming to the firm in droves, leading to a steady rise in the volume of counselling and contentious mandates sent IKM’s. Meeting this demand with confidence and poise is William Maema, an IP authority and beacon for both patrons of the firm and the entire African IP market. Called upon by the highest political authorities in neighbouring countries, Maema has played an instrumental role in designing IP approaches in the region and advancing better practices, laws and policies. Working side by side with Maema, Christine Njau has also built an excellent reputation for her efficient coordination of trademark registrations across multiple African territories.
Kaplan & Stratton Advocates
Kaplan & Stratton is not just one of the longest-serving IP providers in Kenya, it is also one of the best. The ensemble has a talent for procuring trademark rights and ensuring their unshakeable ongoing protection, as well as a knack for IP value creation and commercialisation. Hailed as “a luminary of trademark practice in Kenya”, Peter Hime has blazed a trail in intellectual property since qualifying as a Kenyan Advocate in 1970. Joining Hime in the WTR 1000 gold tier this year is Patrick Ikimire, who is distinguished by his versatility as an IP practitioner. Corporate lawyer Sam Wainaina is another ace in the pack; he deploys his heightened commercial sense to great effect in the areas of licensing and franchising.
Simba & Simba Advocates
Simba & Simba plays host to a vibrant and expanding IP practice. The firm renders a competitively priced service alongside thoughtful and strategic advice. Illustrative of the latter is the set’s approach to disputes, which emphasises effective negotiation as opposed to rushing to court. A strong proponent of practical and commercial solutions in contentious scenarios is experienced IP all-rounder Perpetua Mwangi. The recipient of enthusiastic praise, Mwangi is “highly skilled in both prosecution and litigation, quick to respond and provides straight-to-the-point advice, always with an eye on cost efficiency. She is a pleasure to work with”. Like Mwangi, managing partner Benard Murunga is also a Kenyan High Court advocate and expert in African prosecution and portfolio management.
- Peter J Hime - Kaplan & Stratton Advocates
- Patrick Ikimire - Kaplan & Stratton Advocates
- William I Maema - Iseme, Kamau & Maema Advocates
- John Syekei - Bowmans (Coulson Harney LLP)
- Akash Devani - Anjarwalla & Khanna
- Peter Kamero - Dentons Hamilton Harrison & Mathews
- Kiragu Kimani - Dentons 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 - Dentons Hamilton Harrison & Mathews