Africa: Kenyan anti-counterfeiting legislation is constitutional
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

Africa: Kenyan anti-counterfeiting legislation is constitutional

In the recent case of Paul Nduba v Hon Attorney General and The Anti-Counterfeit Agency, a Kenyan court ruled that the provisions of the Kenyan Anti-Counterfeit Act (ACA) are constitutional. The facts were that the Anti-Counterfeit Agency had conducted a raid on a shop and seized what it believed was counterfeit clothing. Brands involved included Puma, Nike, Adidas and Jeep. The shop owner was present during the raid, the goods seized were itemised, and the shop owner signed an inventory. The shop owner then went to court to challenge the legality of the search and seizure.

What the court had to decide was whether the provisions of the ACA are constitutional. Judge Odero started off by making the point that, although the shop owner had not advanced any arguments on the issue, it did need to be considered, because Kenyan courts take the view in constitutional matters determining the substance of the matter takes precedence over formal procedural issues. After pointing out that there is a rebuttable presumption that a statute complies with the Constitution, the judge decided that the provisions of the ACA are constitutional. In particular the judge ruled that:

  • The search and seizure provisions in the ACA do not breach the right to privacy guaranteed under Article 31 of the Constitution. As the judge pointed out, the right to privacy is not absolute, and it can be limited by statute law if "the limitation is reasonable and justifiable…taking into account all relevant factors". These factors include the nature of the right, the reason and importance of the limitation, and the need to ensure that rights and freedoms do not prejudice the rights and freedoms of others.

In addition, Article 40(5) of the Constitution says that "the state shall promote and protect the intellectual property rights of the people of Kenya". The judge went on to say that the ACA was passed to realise this constitutional right to protection of intellectual property. The sections of the ACA that allow inspectors to enter premises where it is suspected that there may be counterfeit goods, search the premises, take steps to terminate dealings, seize, detail and remove goods, are "perfectly in line with the objective of the Act in protecting intellectual property". There was no invasion of the right to privacy.

  • The mere fact that the IP owners had not lodged complaints did not make the raid unlawful. As the judge said: "It is envisaged that in certain circumstances an inspector may act without there having been any prior complaint." Section 34 of the ACA says that inspectors can take steps on their own initiative if they suspect counterfeiting, provided that the IP owner is subsequently notified.

  • The raid was not illegal simply because no charges had been laid against the shopkeeper following the raid. That is because Section 28(1) of the ACA grants an inspector a period of three months to prefer a charge, and this period had not yet elapsed.

IP owners will be heartened by this decision. They may also be amazed to hear that the Kenyan constitution specifically protects intellectual property.


Chris Walters

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

more from across site and ros bottom lb

More from across our site

The FRAND rate is only 5 cents higher than the per-device rate determined at first instance in 2023
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Nearly four months after joining Crowell & Moring, Edward Taelman reflects on starting afresh, new clients, and firm culture
Firms discuss the ebb and flow of life sciences IP work and explain how they help professionals pivot between specialities
Mercedes-Benz, Dolby Laboratories, and Panasonic discuss the merits and drawbacks of the USPTO's terminal disclaimer proposal
In-house counsel believe Chinese domestic firms are becoming as sophisticated as international firms, but they may not shift their portfolios just yet
The Court of Appeals for the Federal Circuit is looking to renew a ban that has prevented Judge Pauline Newman from hearing cases
The list of the top representative firms at the UPC may yield few surprises but their success did not come free
The German firms have accounted for 26% of all infringement actions, while US corporations appear interested in litigating at the forum, a report has revealed
Vincent Brault tells us how he fits kitesurfing into his lunchtime routine and why IP is no longer seen as ‘nerdy’
Gift this article