Legislative Review: Amendments to the Anti-Counterfeit Act in 2018

The Government has recently amended the Anti-Counterfeit Act of 2008 and the new changes come into effect on 18th January 2019. The amendments were incorporated in the Statute Law (Miscellaneous Amendments) Act of 2018. A Summary of the changes to the Act are as follows:

Institutional and Definition Changes

  • The Anti-Counterfeit Agency has now been transformed to the “Anti-Counterfeit Authority” by change of name.
  • The Executive Director of the Anti-Counterfeit Authority has been given similar powers of the Commissioner of the Kenya Revenue Authority to seize and detain all suspected counterfeit goods under the Act.
  • The definition of Counterfeit goods has also been expanded to recognize intellectual property rights and now reads, “Counterfeit goods” means goods that are the result of counterfeiting, any item that bears an intellectual property right and includes any means used for purposes of counterfeiting.
  • The definition of a counterfeit mark has been introduced in the Act as a spurious mark and details provided on the same.

Additional Inspection Powers

The Anti-Counterfeit inspectors have now been given similar powers to the ones exercised by a customs officer with regard to importation of counterfeit goods under the East African Community Customs Management Act, 2005.

Entry to premises by Anti – Counterfeit Inspectors

An Inspection Warrant may be issued by a magistrate authorizing an inspector to enter the premises, if need be by force.

Below is a table with information on the conditions for issuing an entry warrant:

Who may issue a warrant? Magistrate
Details of a Warrant Must have a seal of the Magistrate Court as evidence that the magistrate has given their hand.
Period of Warrant being enforce  One (1) month
Grounds for issuing a search warrant by a Magistrate
  • Sworn information must be provided to a Magistrate before a warrant is issued;
  • In cases where there is a likelihood of any goods, books or documents which an inspector has power to inspect to disclose evidence of commission of an offence under the Anti-counterfeit  Act;
  •  Where any offence under the Act has been, is being, or is about to be committed on any premises;
  • In cases where admission to the premises has been or is likely to be refused and that notice of intention to apply for a warrant has been given to the occupier;
  • In cases where an application for admission, or the giving of such a notice, would defeat the object of the entry, or that the premises unoccupied, or that the occupier is temporarily absent and it might defeat the object of the entry to await his return.
Requirement to secure premises in condition found
  • An inspector entering any premises may take with him such other persons and such equipment as may appear to be necessary; and
  • Must leave any premises as effectively secured against trespassers as he found them which, they have entered by virtue of a warrant if the premises are unoccupied or the occupier is temporarily absent.

Recognition of expert evidence of a person in employment

The new changes recognize the evidence of any person in the employment of the intellectual property rights holder or its agent as expert evidence.  However, the person must have demonstrable training offered by such intellectual property rights holder or experience in the identification of the intellectual property rights holder’s products to be admissible as expert evidence in any criminal or civil proceedings concerning an act of dealing in counterfeit goods

Recordation of Trademarks

The Anti-Counterfeit Authority has now been given the mandate to register trademarks relating to goods to be imported into Kenya, irrespective of the place of registration. Other key issues to note on this include;

  • An application to record one or more trademarks is required to be in writing in a prescribed manner provided by the Authority and make payment of a fee provided in the Second Schedule to the Act.
  • A trademark registered for more than one class of goods, shall attract a fee for recordation for each class of goods.
  • The effective date for recordation of the trademark is on the date when the application is approved.
  • The approval for recordation shall be valid for one year from the date of approval or the current registration period of the trademark, whichever is shorter.
  • In case of change in ownership, then the new owner can apply for recordation.
  • In case of renewal, the applicant ought to apply within 30 days before the expiry of the one year recordation period

Certification Mark, Seizure ad Destroying of Goods

  • Importers who have compiled with the recordation shall be issued a certification mark in the form of an anti-counterfeit security device at a fee to be set out in the Second Schedule to the Act
  • The Authority shall have the power to seize and destroy any goods originally imported into Kenya but found within the country that do not bear the anti-counterfeit security device

Additional Offences

Additional offences have been introduced under the Act for any person who;

  • has in his possession or control in the course of trade any labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hand tags, documentations, or packaging of any type or nature, with a counterfeit mark applied thereto, the use of which is likely to cause confusion, to cause mistake, or to deceive;
  • aids or abets or conspires in the commission of any offence under this Act;
  • import into Kenya, any goods or items bearing a trade mark, trade name or copyright that has not been recorded with the Authority;
  • import into Kenya, in the course of trade, any goods or items except raw materials that is unbranded;
  • fail to declare the quantity or the intellectual property right subsisting in any goods being imported into the Kenya;
  • falsely declare the quantity or the intellectual property rights subsisting in any goods being imported into Kenya; or
  • import into or transit through Kenya any labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hand tags, documentations, or packaging of any type or nature, with a counterfeit mark applied thereto, the use of which is likely to cause confusion, to cause mistake, or to deceive.

 

DISCLAIMER: The information contained in this news alert is for general information only and is not intended to provide legal advice. This alert is prepared for the general information of our members and other interested persons. Information contained in this alert should not be acted upon in any specific situation without appropriate legal advice. We do not accept responsibility or liability to users or any third parties in relation to use of this news alert or its contents. All copyright, trademarks and other intellectual property in or arising out of the materials vest solely in Kenya Association of Manufacturers.

For any further information or clarification on this review, please contact Kenya Association of Manufacturers at info@kam.co.ke

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