Africa: Kenyan authorities propose changes to the ACA and IPA

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Africa: Kenyan authorities propose changes to the ACA and IPA

The Kenyan authorities have published a bill, the Statute Law (Miscellaneous Amendments) Bill 2018 (the Bill), which proposes significant changes to two pieces of IP legislation.

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.

Wayne Meiring


Spoor & Fisher JerseyAfrica House, Castle StreetSt Helier, Jersey JE4 9TWChannel IslandsTel: +44 1534 838000

Fax: +44 1534 838001

info@spoor.co.ukwww.spoor.com

more from across site and SHARED ros bottom lb

More from across our site

Jorg Thomaier, who has been head of IP at the German pharma company since 2010, will leave later this year and hand the reins to the company’s head of patents
Why companies must conduct thorough IP due diligence – even if it may not be mandatory
Celia Cheah at Wong & Partners in Malaysia says she is aiming to tap into the Baker McKenzie member firm’s international network and expand its IP portfolio
A team of partners that joined Boies Schiller Flexner say they would like to double the firm’s patent litigation capabilities
Iris Quadrio at Marval O’Farrell & Mairal discusses mentors, volunteering, and leadership in our latest interview to mark women leaders in IP
Abigail Struthers discusses why law firms are like a mix of small businesses and explains why hopeful patent lawyers should not assume that a science degree is essential
We review the latest batch of IP STARS rankings, analyse a major law firm collaboration following the opening of India’s legal market, and look at why Canadian brands are promoting ‘Canadianness’
Counsel explain how the USPTO’s decision to discretionarily deny institution of a PTAB case affects their advice to clients
The Life Sciences Awards announces the winners for the 6th annual awards
The UPC’s plans to roll out its new Case Management System and a setback for TikTok in India were also among the top talking points
Gift this article