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LEGAL ALERT: Intellectual Property Bill 2020 Analysis

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The Intellectual Property Bill, 2020 (the Bill) introduces simplified application processes and procedures relating to matters intellectual property in Kenya. This is done by proposing that all governing legislation are 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 (KECOBO), Anti-counterfeit Authority (ACA) 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: 

  1. The Industrial Property Act; 
  1. The Trademarks Act; 
  1. The Copyright Act; and  
  1. 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 into account stakeholders’ comments 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 Policy/StrategyThe Bill provides that the CS responsible shall develop a national IP 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 KenyaThis is a step in the right direction considering the lack of cohesion or strategic plans from the existing agencies on matters IP. 
Establishment and Administration of the OfficeThe Bill establishes the Intellectual Property Office of Kenya (IPOK).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 Intellectual Property (IP) matters – Considering applications for and grant or register Intellectual Property Rights (IPRs) -Advising government through the Cabinet Secretary on relevant policies and measures on intellectual property -vet and verify technology transfer agreements -establish and maintain relevant repositories, data bases and registers on intellectual property information -undertake valuation and commercialization of intellectual property -protect genetic resources from waster  
Establishment of the CouncilThe Bill establishes the Council of IP Office of KenyaThe council comprises of various state agency representatives such as permanent secretaries from ICT and treasury in addition 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 GeneralThere 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 wholistic cohesive approach in enhancing IP rights.
Intellectual Property TribunalThe Bill maintains an IP Tribunal of upto seven members with the chairperson and vice chairperson being persons capable of appointment as high court judges. The tribunal shall have original civil jurisdiction to matters referred to it including disputes as to licensing. The tribunal has been given some autonomy from the IP Office with it having its own 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 nature jurisdiction it used to hold on matters referred to it from the managing director.
Registrability of TrademarksThe Bill exhaustively outlines what will be considered as 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 itThe discretion of the KIPI registry used to underscore a lot of registration formalities. The detailed approach to what marks can or cannot be registered is necessary.
Registered Trademark as object of propertyA 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 facilityIP 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 assignment or transfer of the registered trademark in respect of which a deed of security has been made.
Rectification and Correction of RegisterThe 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 Right holders will be pro-active in protecting their marks in the same way they do tangible assets. 
Protection of Geographical IndicationsGeographical names or other indication 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 indicationsThis is a timely provision considering the various reported cases of appropriation of Kenya’s well recognized historical cultural heritage.
Copyright and related rightsThe 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 conditionsThis 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 ProviderThe Bill provides for 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 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 Kshs 500,000/-. 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 cyber crime offences and the needs to hold parties accountable for their acts and omissions.
Collective administration of copyrightThe Bill has made substantial provisions on 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.
InspectionThe Bill has widened the scope of inspector from dealing with counterfeit goods to include infringed works and articlesOther 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 and Technology team Partners Catherine Kariuki, Janet Othero and Associate Joyanne Njau with the assistance of Associate Chris Oyier from the Corporate and Commercial Law team

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