Managing Intellectual Property

East African anti-counterfeiting

01 July 2010

Anti-counterfeiting in East Africa is a topic in vogue, highlighted by the Kenya Anti-Counterfeit Act (Number 13 of 2008) and the interlocutory ruling of Justice Mwendoh, dated April 23 2010 in Kenya High Court Petition Number 409/2009 Ochieng', Atieno & Munyi v Attorney General. Reading Ochieng's case revived 1960s memories of a truckload of fake Aspro drugs destroyed by order of the then Supreme Court of Kenya, and the thoughts that:

  • Counterfeiting (by whatever name):
    - Is timeless.
    - Exploits trade marks, patents and other legitimate rights.
    - Exploits the national character of industrial property rights, but is international.
  • Specialised anti-counterfeiting legislation is important but other weapons have always been available.

The Aspro in issue started as generic acetylsalicylic acid tablets, perfectly serviceable before being wrongfully packaged in filthy conditions. That case was about a trade mark; health was a side issue but relevant to the offending product's fate.

During the 2000s, Kenya IP pirates were raided under the Trade Descriptions Act; see Managing Intellectual Property June 2007, "Ingenious measures and a setback". The Secretariat, active in those adventures, was disbanded as the new legislation approached.

The Anti-Counterfeit Act is based on that of South Africa, around which much experience has accumulated. It is not yet in force. The methodical construction of infrastructure (rules, people and premises) continues but a date for the commencement of the Act cannot be predicted.

Health rights are fundamental in Ochieng's case. The petitioners apprehend that the Act may be so interpreted that generic medicines for HIV sufferers are categorised as counterfeit goods; therefore, sufferers are deprived of a constitutional right to obtain those medicines. They seek declarations to that effect and pending determination of those issues, requested interlocutory orders delaying enforcement of the affected sections of the Act so far as they relate to generic drugs and medication.

The judge, satisfied that the petition was not frivolous and disclosed an arguable case, granted the interlocutory orders. Accordingly after the Act comes into force, it cannot immediately be used to prevent import of generic drugs and medicines. Nevertheless, there is no decision at this stage on the constitutionality of the Anti-Counterfeit Act. That decision awaits trial of the main case.

Meanwhile on other fronts in East Africa:

  • Tanganyika (Mainland Tanzania), lacking a specific anti-counterfeiting statute, has revitalised the Merchandise Marks Act under which offenders are prosecuted before the magistrates' courts. This effective grassroots remedy is insufficiently enforced in practice.
  • The other part of the United Republic of Tanzania is Zanzibar. Here, in Rwanda and in Burundi consolidated industrial property codes are coming into effect. They are on the World Intellectual Property Organisation (WIPO) model with comprehensive enforcement sections including border measures.
  • Uganda has a bill, similar to the Kenya and South African Acts, under Cabinet consideration.
  • The East African Community has published another, similar draft Act, which its protagonists would like to see as a regional statute in place of individual national laws.
Mac Spence

Spoor & Fisher Jersey
Africa House, Castle Street
St Helier, Jersey JE4 9TW
Channel Islands
Tel: +44 1534 838000
Fax: +44 1534 838001
info@spoor.co.uk
www.spoor.com


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