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Jeff Bezos on fake goods; Dyson counterfeiters jailed; trademarks at risk in Kenya – news digest

In our latest round-up, we look at INTA’s Unreal Campaign going virtual, how counterfeiting is on the rise in India, Romania upgrading its e-filing system, and much more.

19 Jun 2020

Kenya trademark removal risk; warning over “egregious” scam email; ‘.brands’ scrap heap – news digest

In our latest round-up, we look at AT&T considering the sale of Warner Bros Interactive, a sushi trademark dispute, ICANN and Global Cyber Alliance partnering up, and much more.

9 Dec 2019

Confusion over non-use and assignment of associated marks in East Africa

Rights holders in Kenya, Tanzania and Uganda are reaping the benefits of associated trademarks. However, a lack of relevant case law means that legal provisions concerning non-use and assignment of such marks are leaving many scratching their heads.

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8 Jul 2020

Enforcement in Africa: key qualities of a continent-wide brand protection strategy

WTR traverses the whole of Africa to provide brand owners with a comprehensive guide to brand protection across the region. Read more

2 Jul 2020

The importance of brand protection in Kenya

While it is best practice to make trademark protection a priority when starting a new business, it is an area that is often neglected. Unfortunately, failure to have in place proper safeguards from the start can lead to unpleasant consequences. Read more

30 Jun 2020

Kenya’s journey towards a harmonised IP legal regime

The Intellectual Property Bill 2020 represents a significant step towards the strengthening of IP rights in Kenya. However, the bill contains gaps that threaten the practicality of the legislation. Read more

7 Feb 2020

High Court reaffirms procedural correctness as the heart of the registrar’s rulings

In a case involving an application for the registration of the mark THERMOS, the High Court of Kenya has issued a significant decision, which provides clarity and certainty with regard to dealings with the registrar’s office. Read more

Anti-Counterfeiting

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3 Dec 2019

Counterfeit hotspots in Kenya that brand owners should be aware of

In the latest edition of our regular series on marketplaces around the world that are reportedly notorious for the trade of counterfeit goods, we head to the African nation of Kenya. Read more

1 Mar 2019

Customs recordals now possible in Kenya

As a result of a recent amendment to the Anti-counterfeiting Act, Kenya now has a system of recording trademarks with the customs authorities. Under the new system, the Anti-counterfeit Agency will be able to stop the import of counterfeit goods at ports of entry. Read more

26 Feb 2019

Brazil calls for ‘.amazon’ delay, Swatch and Samsung face-off, and Lithuanian open IP data: news digest

In our latest round-up, we look at Jerry Seinfeld filing a lawsuit over a ‘counterfeit’ Porsche, a draft policy in India that could empower platforms to blacklist counterfeit sellers, and much more. Read more

12 Feb 2019

Plain packaging passed in Singapore, cat photo trademarks, and US Senate IP subcommittee: news digest

In our latest round-up, we look at a new report showing 70% of Kenyans use counterfeit products, a new system developed to identify fake logos, the Spanish football league scoring a piracy win, and much more. Read more

Brand management

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1 Oct 2019

Trademark licensing in Africa: an A-Z whistle-stop tour

With Africa proving to be a particularly lucrative region for brands seeking licensing opportunities, we examine what rights holders need to know about trademark licences from a swathe of nations across the continent. Read more

26 Sep 2019

Trademark licensing in Africa: inside three key jurisdictions

With Africa proving a particularly lucrative region for brands seeking licensing opportunities, we examine what rights holders need to know about trademark licences in three key jurisdictions from across the continent Read more

10 Dec 2018

How INTA is helping to shape the trademark environment in Africa and the Middle East

This week, INTA is hosting its 2018 Middle East and Africa Conference. As the event kicked off, we spoke with an INTA representative to look at recent developments and why an annual meeting in the region is “a natural step”. Read more

2 Aug 2018

Parallel imports remain a grey area for IP rights in East Africa

Kenya, Tanzania and Uganda each have different legal approaches to the treatment of parallel imports, making generalisations dangerous for trademark owners and importers alike. Read more

Enforcement and Litigation

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13 Jun 2019

Cross-examination and the WOKOZIM case: a new direction for proceedings in Kenya?

A recent decision of the assistant registrar of trademarks within the context of an application for expungement of the mark WOKOZIM shows that, in certain circumstances, a deponent can be asked to appear physically for cross-examination. Read more

2 May 2019

High Court clarifies legal position on conflicting trademark and business name rights

A recent Kenyan High Court decision has clarified the legal position in respect of the conflict between trademark and business name rights, which has arisen primarily because the trademarks registry and the business names registry are not interlinked. Read more

27 Jun 2018

Important amendments to IP law proposed: dual trademark registration to be introduced?

Proposed amendments to the Anti-Counterfeiting Act suggest that all marks relating to goods to be imported into Kenya must be recorded with the Anti-counterfeit Authority and trademark registration will be a prerequisite.

10 May 2018

Counterfeiting in Africa: part one of an A-Z guide

The world is awash with counterfeit goods, with Africa proving no exception. In the first of part of our A-Z, we examine the anti-counterfeiting frameworks from Algeria to Morocco. Read more

Government/Policy

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1 Nov 2017

A new dawn for Kenya

The trademark landscape in Kenya is set to shift dramatically with proposed changes to the law. We examine some of the key developments and the issues that brand owners need to be aware of in order to protect their marks effectively in the east African nation Read more

28 Sep 2016

Court of Appeal upholds High Court decision in Doshi case

The Kenya Revenue Authority, a statutory body which assesses, collects and accounts for all revenues for the Kenyan government, has appealed against the judgment in Doshi Iron Mongers Ltd v Weights and Measures Department that found in favour of Doshi, a private Kenyan company dealing in general merchandise.

16 Feb 2015

Amendments to Anti-counterfeit Act come into force

The Statute Law (Miscellaneous Amendment) Act of 2014 has made several amendments to key statutes in Kenya, one of them being the Anti-counterfeit Act. A welcomed addition to the Anti-counterfeit Act is Section 34A, which provides for the compounding of offences. In addition, a new Sub-section 16(4) establishes an Intellectual Property Enforcement and Co-ordination Advisory Committee.

18 Mar 2014

IP bodies consider proposal to merge them into one

Chief officers from the Kenya Copyright Board, the Kenya Industrial Property Institute and the Anti-Counterfeit Agency are currently discussing the government’s proposal to merge them into one body called the Kenya Intellectual Property Office. The merger proposal is based on, among other things, the fact that the functions undertaken by the three agencies complement each other.

Law Firms

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15 Aug 2016

Venturing into Africa: law firm opportunity and risk in an evolving IP landscape

For this week’s blog post from the WTR 1000 research team, it is timely to consider the current state of trademark protection in Africa.

Portfolio Management

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28 Sep 2018

How similar is too similar? Lloyd Schuhfabrik Meyer test affirmed

The assistant registrar of trademarks in Kenya has found that Jaguar Land Rover’s F-PACE mark is not similar to Shanghai Durotyre’s earlier PACE mark and affirmed the test laid out in Lloyd Schuhfabrik Meyer. Read more

2 Aug 2018

High Court Sony decision: are well-known marks really protected?

In a decision that "may be a shock to many", the Kenyan High Court has held that Sony Corporation had failed to prove that its SONY mark was a well-known mark in Kenya.

5 Apr 2018

Does mere use confer protection? High Court provides answer

Following the decision of Kenya's High Court in Fibrelink Limited v Star Television Production, prior use of a similar mark is now sufficient grounds for an opposition.

14 Feb 2018

“This puts a stake in the ground”: why brands must pay attention to the Maasai IP initiative

An initative which represents the Maasai tribe of Kenya and Tanzania in efforts to gain control over commercial uses of its cultural ‘brand’ has recently secured a deal with Koy Clothing. We speak with the negotiator behind the agreement on why it matters for brands.

Trademark law

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15 Sep 2017

Changes in Mozambique and Kenya to trademark applications and renewals

The Mozambique Industrial Property Institute has announced that it will increase its official fees for the filing and prosecution of trademark and patent applications. In Kenya, the Registrar of Trademarks has published practice directions which effectively remove the additional 30-day notice period for the renewal of trademarks.

29 Mar 2017

Trademark procedures and strategies: Kenya

Any person claiming to be the proprietor of a trademark that it uses or proposes to use may apply to register the mark. Where an applicant appoints an agent to act on its behalf, the applicant must provide the agent with a power of attorney signed in the agent’s favour. This power of attorney need not be legalised.

14 Oct 2016

High Court upholds registrar of trademarks’ decision to admit new evidence after close of arguments in opposition proceedings

A recent High Court decision confirms that a writ of judicial review is a special remedy used only in the most deserving of circumstances, and suggests that parties can apply to file further evidence at any time in opposition proceedings as long as a decision has not yet been issued.

28 Jul 2015

Litein Tea Factory case highlights conflict between Trademarks and Companies Acts

The case of Litein Tea Factory Company Limited v Davis Kiplangat Mutai has highlighted once again the conflict between the provisions of the Trademarks Act and the Companies Act - but the judge chose not to settle the issue. There is no coordination between the registrar of companies and registrar of trademarks in Kenya, which has led to extreme anxiety amongst users of the two services.

Twitter

06 Aug 2020

@WTRmagazine RT @koodzo: Drop shipping sites are flooding influencers with counterfeit goods: what brands should do - World Trademark Review https://t.c… Read more

06 Aug 2020

@WTRmagazine RT @WALADC: Most major Twitch streamers have not obtained registered trademark protection for their brands https://t.co/rPaZbqNbRH Read more

04 Aug 2020

@WTRmagazine RT @BackFourBP: Interesting piece of research conducted by @timlince in the @WTRmagazine, with @ManUtd crowned trade mark champions! https:… Read more

04 Aug 2020

@WTRmagazine “A step in the right direction”: CBP ruling on small consignments set to strengthen anti-counterfeiting toolkit.… https://t.co/1mPWhg85s1 Read more

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Ana Castañeda

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Mexico City, Mexico

C&L Attorneys, SC

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Kenya

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