The Anti Counterfeit Authority (ACA) has been working to operationalise section 34B of the Anti Counterfeit Act 2008 (the Act) and the more recent implementation framework introduced by the Anti Counterfeit Recordation Regulations 2021 (Recordation Regulations).
By newspaper notice on 26th April 2022, the ACA has set the deadline for compliance with the Act and Regulations as 01 July 2022. From that date, it will be mandatory for imports into Kenya bearing intellectual property rights (IPRs) such as trademarks to be recorded (a form of license) with the ACA.
In essence, it is an offence to commercially import goods into Kenya without recording the IPRs relating to those goods with the ACA.
This will cross cutting as far as industries are concerned, from FMCG covering food, snacks and beverage, to apparel, cosmetics, machinery and equipment. We also surmise that this creates an additional licensing requirement for importers, though ostensibly the intention is to clamp down on counterfeits coming into the country given our porous borders.
The Law
Section 34B of the Act mandates that IPRs (most commonly trademarks) relating to all ‘goods to be imported into Kenya, irrespective of the place of registration, shall be recorded with the ACA’. Upon successful application to the ACA, the ACA shall issue an importer of goods with a ‘certification mark in the form of an anti-counterfeit security device’. Further, the Act provides that the ACA ‘shall have the power to seize and destroy any goods originally imported into Kenya but found within Kenya that do not bear the anti-counterfeit security device.’ Section 32 of the Act it is an offence to ‘import into Kenya, any goods or items bearing a trade mark, trade name or copyright that has not been recorded with the ACA’ . If convicted of such offence in court, a person is liable to imprisonment for five to fifteen years and or fine of between three to five times the retail price of the goods.
It is our understanding that the ACA is taking a phased approach to the recordation and introduction of an ‘anti counterfeit security device’ stipulated in law. We had anticipated the device would be like the more known KEBS certification mark stamps but are now informed that the government is looking at a single mark/sticker for all product licenses required hence ACA will await and be part of the single multi-agency certification/mark/sticker. The ACA will however be proceeding to record and enforce recordations in the interim.
From our reading of the Act and the Recordation Regulations, we surmise that:
Recordation is mandatory for businesspeople importing branded goods, and applies across industries-food and beverage, confectionary and snack, apparel, branded machinery and equipment, motor vehicles etc
Recordation does not apply to unbranded raw materials
The registration of IP rights in imports must be done by the owner, licensee, assignee of the IP rights (most commonly it will be the trademark owner or their licensee)
Parallel importers are also required to notify the ACA of intention to import, giving particulars of the goods including HS codes, brand names etc
Post-recordation, all imported goods are to continue to bear the ACA’s anti-counterfeit security device, which we presume will be similar to the KEBS marks
All this however remains to be tested in practice with the operationalisation by the ACA.
Read our earlier post here giving a summary of the Recordation Regulations
Photo by william william on Unsplash