The amendments proposed to the Anti-Counterfeit Act 2008 are controversial. They effectively create a dual trade mark registration system. All trade marks relating to goods being imported into Kenya will need to be recorded with the Anti-Counterfeit Authority (ACA). What makes dual registration mandatory is the fact that it will be an offence for an importer to import goods bearing a trade mark that has not been recorded with the ACA, and a trade mark registration will be required in order for the trade mark to be recorded at the ACA. The recordal provisions apply not only to trade marks but also to “copyrights, trade names or any other form of intellectual property rights”, despite the fact that there is no copyright registration in Kenya. Importers will be issued with a “certification mark” in the form of an anti-counterfeit security device. The ACA will have the power to seize and destroy any imported goods that do not bear the anti-counterfeit device.
The Bill creates some interesting offences. It will be an offence to import into Kenya any unbranded goods except raw materials. It will be an offence to fail to or falsely declare “the quantity or the intellectual property right subsisting in any goods being imported into Kenya.”
The amendments proposed to the Industrial Property Act 2001 (IPA) deal with patents and designs. For patents, the Bill says that a patentee must disclose “the best mode” for carrying out the invention, and that in cases of joint ownership, third parties may only carry out certain acts with joint permission from joint owners. For industrial designs, the Bill specifically excludes anything that serves solely to obtain a technical result, methods or principles of manufacture or construction, and creations of a purely artistic nature. It also introduces some new definitions, a new novelty provision, and provisions regarding the confidentiality of an application before publication.
Hopefully the Kenyan authorities will reconsider some of the amendments proposed to the Anti-Counterfeit Act.