Published Date: November 1, 2022
Adams & Adams Partner and Head of our Anti-Counterfeiting Department, Godfrey Budeli, recently met with Dr Robi Mbugua Njoroge, the current CEO of the Anti-Counterfeit Authority (ACA), together with the ACA Management, Legal and Compliance, Investigations and Recordation teams at the ACA’s Headquarters in Nairobi, Kenya.
Discussions focused on the ACA’s readiness with the impending implementation of the mandatory recordal system, as well as reinforcing our collaboration with the ACA. Despite challenges experienced with the proposed system, the ACA is adamant that it is unlikely that the implementation date will be extended beyond 1st January 2023. Therefore, it is critically important that all entities with a business interest in Kenya which require goods to be imported into that country take steps to file a recordal application with the ACA as soon as possible.
It should be noted that the implementation date of the legislation which introduces this mandatory recordal system is 1st January 2023, however, applications can be filed at any stage before or after this date and will be valid for a year after which an application for renewal will have to be made.
Although there appears to be some discrepancy between the Regulations and the advice given to us by the ACA, we are assured that it is not necessary to record each and every registered intellectual property right (IPR) associated with the goods in question. If the products bear the house and sub-brands, it should be sufficient to only record the house brand/s in the relevant classes in certain instances. That said, it is important to thoroughly review the IPR owner’s registered IPR’s in Kenya (or in other jurisdictions), as well as the actual products sold or distributed in Kenya to make an informed decision as to which trade marks are to be included in the recordal. Read more