The Intellectual Property Bill, 2020 (the Bill) introduces simplified application processes and procedures relating to matters of intellectual property in Kenya. This is done by proposing that all governing legislation is incorporated under one Act, guaranteeing cohesion and uniformity of reference.
The main objective of the Bill is to: –
a) Consolidate all laws relating to intellectual property;
b) Provide for the establishment of the Intellectual Property Office of Kenya by merging three intellectual property agencies namely Kenya Copyright Board, Anti-counterfeit Authority and Kenya Industrial Property Institute (KIPI);
c) Provide for the functions, organization and administration of the office.
The Bill intends to do this by repealing the following Acts:
- The Industrial Property Act;
- The Trademarks Act;
- The Copyright Act; and
- The Anti-Counterfeit Act.
In doing so the Act borrows widely from the above-mentioned Acts with a few modifications and additions some of which we have highlighted below.
Once the drafters of this bill have taken stakeholders’ comments into account and presented the final bill for enactment, we shall update you on the changes. We are keen to see how this Bill will be implemented within the singular oversight body. A highlight of the provisions of the bill is provided below;
| Issue | Our comments | |
| National Intellectual Property (IP) Policy/Strategy | The Bill provides that the CS responsible shall develop a national Intellectual Property policy and strategy to be reviewed periodically with consultations from stakeholders, including issuing an annual report on the status of IP and IP rights in Kenya | This is a step in the right direction considering the lack of cohesion or strategic plans from the existing agencies on matters of IP. |
| Establishment and Administration of the Office | The Bill establishes the Intellectual Property Office of Kenya. | Some of the improved combined functions of the new office include; – Organizing and conducting training relating to intellectual property matters; – Collaborating with national regional or international organizations on IP matters – Considering applications for and granting or registering Intellectual Property Rights -Advising the government through the Cabinet Secretary on relevant policies and measures on intellectual property -vet and verify technology transfer agreements -establish and maintain relevant repositories, databases and registers on intellectual property information -undertake valuation and commercialization of intellectual property -protect genetic resources from waster |
| Establishment of the Council | The Bill establishes the Council of IP Office of Kenya | The council comprises various state agency representatives such as permanent secretaries from ICT and treasury, as well as the Attorney General’s and Prosecutor’s office. Their powers are yet to be clearly defined but they will mirror those of the board of directors. |
| Office of the Director General | There shall be established the office of the Director General of the Office who shall oversee the day-to-day management of the office and direction of affairs and transactions of the Office. | The creation of one office to coordinate the functions of all IP and counterfeit-related activities will lead to a holistic cohesive approach to enhancing IP rights. |
| Intellectual Property Tribunal | The Bill maintains an IP Tribunal of up to seven members with the chairperson and vice chairperson being persons capable of appointment as high court judges. The tribunal shall have original civil jurisdiction over matters referred to it including disputes as to licensing. | The tribunal has been given some autonomy from the IP Office with it having its operations funded by Parliament and grants from the Judicial Service Commission. The procedure of handling disputes before the tribunal is now well-defined and detailed. The tribunal will enjoy wider jurisdiction as opposed to the appellant and review the nature of jurisdiction it used to hold on matters referred to it by the managing director. |
| Registrability of Trademarks | The Bill exhaustively outlines what will be considered marks that can or cannot be registered as trademarks and includes customary indications in that listing of marks that cannot be registered It further directs that similar marks lodged for registration within 30 days of each other shall be subjected to directions from the Tribunal for assertion of rights to it | The discretion of the KIPI registry used to underscore a lot of registration formalities. A detailed approach to what marks can or cannot be registered is necessary. |
| Registered Trademark as the object of property | A registered trademark may be hypothecated by a deed of security or a charge. The Bill provides that a registered trademark may be attached and sold pursuant to court order; it may be charged by a deed of security for a lending facility | IP is being recognized as an asset in most jurisdictions and this is timely. This allows the registered proprietor of the trademark to pledge as collateral the right secured by the registration of the trademark. Once the debt is discharged, any person may apply to the Registrar in the prescribed manner for removal of the endorsement from the register. The Bill also allows for the assignment or transfer of the registered trademark in respect of which a deed of security has been made. |
| Rectification and Correction of Register | The Bill makes new provisions for circumstances under which the Registrar can remove a registered trademark upon application. Some of the grounds include registration without the bonafide intention to use or not using the trademark for a certain period preceding the application for removal. Once removed the new applicant can apply for registration subject to conditions set by the Registrar. | IP rights holders will be proactive in protecting their marks in the same way they do tangible assets. |
| Protection of Geographical Indications | Geographical names or other indications of geographical origin may now be registered as certification trademarks. The Bill further goes to provide that geographical indications shall be protected under the Bill regardless of registration. It details the requirements and process of registration of geographical indications | This is a timely provision considering the various reported cases of appropriation of Kenya’s well-recognized historical and cultural heritage. |
| Copyright and related rights | The Bill proposes to waive infringement of copyright on authorized entities that reproduce and distribute copyrighted works in specialized formats for exclusive use by visually impaired or persons with disabilities subject to certain conditions | This is a progressive move in relation to disability rights that guarantees access to published works by the visually impaired and persons with disabilities. |
| Protection of Internet Service Providers (ISPs) | The Bill provides for the exclusion of liability of ISPs that may cause infringement by providing access or transmitting content in their ordinary course of business in so long as it does not initiate the transmission or select the addressee amongst other conditions. The Bill goes on to detail further circumstances where the ISPs are protected and where they may be transmitting infringed content in the ordinary course of their businesses. The Bill makes a provision for an aggrieved party to issue a takedown notice to an ISP. The ISP will be held liable for refusal to comply with a takedown notice and may be imprisoned or fined KES 500 thousand. ISPs will have an obligation to assist with investigations but not to monitor content transmitted on their systems. | This is a good attempt to regularize content provisions with recent legislation on cybercrime offences and the need to hold parties accountable for their acts and omissions. |
| Collective administration of copyright | The Bill has made substantial provisions for the registration, operations and supervision of collective management organizations. | The recent disputes amongst the many licensed CMOs may soon be easily managed under one regulatory body with its tribunal. |
| Inspection | The Bill has widened the scope of inspectors from dealing with counterfeit goods to include infringed works and articles | Other intellectual property rights have always had to resort to police assistance for infringement disputes. Skilled and licensed inspectors are a welcome addition. |
This analysis was put together by the Telecommunications, Media & Technology team Partners Catherine Kariuki Mulika, Janet Othero and Associate Joyanne Njau with the assistance of Associate Chris Oyier from the Corporate and Commercial Law team