The Anti-Counterfeit (Recordation) Regulations 2021 (“2021 Recordation Regulations”) have introduced a customs ‘recordation’ and a ‘customs watch’ regime of intellectual property rights in Kenya, targeted at more effective anti-counterfeit and anti-illicit trade measures at Kenya’s porous borders.
Customs recordation or recordal is a process whereby owners of intellectual property rights, most commonly trade marks (brands) record their already protected/registered intellectual property rights with the customs authorities. The recordation processs is not an IP registration process, the latter being the mandate of the Registrar of Trade Marks (for trade marks and certification marks), the Kenya Industrial Property Institute (for patents, designs, utility models) and the Kenya Copyright Board (for copyright). Recordation is merely a recording process which enables more targeted seizure, detention and destruction of counterfeit or trade mark infringing goods at the country’s ports of entry.
Though the Recordation Regulations suggest that the recordation applies to all/any forms of intellectual property, in practice (and it the case globally) and alluded to by the recordation fee schedule, the recordation process applies to trade marks (the charges for recordation are dependent on the number of classes, the domain of trade marks.)
Whilst not mandatory for all imports into Kenya (welcome relief for many importers, and different from earlier draft version of these regulations), the recordation process targets mainly cross-border traders whose goods are likely to be the subject of global and cross-border illicit and counterfeit trade. In fact, the 2021 Recordation Regulations provide a process for ‘discontinuation of recordation’, which applies where there has a change of ownership of a recorded IP right, and where the new owner no longer wishes to have the recordation in force.
Like is the case in Europe, the customs recordation procedures and process introduced by the 2021 Recordation Regulations under the Anti Counterfeit Act, apply only with respect to imported goods. This leaves brand owners whose goods may be counterfeited locally to seek the Anti Counterfeit Authority and Police intervention outside the recordation regime.
Under the 2021 Recordation Regulations, an application for recordation may only be made (under section 34(B)) by the owner of the relevant IP right, such as the registered proprietor of a trade mark. As an importer of goods in the course of cross-border trade is not usually the owner of the IP rights those goods may be subject of, the recordation process in Kenya will require global IP owners to be involved in customs processes that often (because of their granular nature) are the domain of the local distributors (persons authorised to use the relevant IP right). The result of this seeming trade hurdle remains to be seen once the recordation begins, though it is likely that IP owners of global brands will pursue trade mark registration at KIPI and customs recordation with the ACA successively.
However, quite unlike customs recordation processes in other parts of the world including China, the United States and Europe, the registration body and authority for purposes of customs recordation under the 2021 Recordation Regulations is not the ‘usual’ customs and border control authorities, but is the Anti Counterfeit Authority. In the United States, for example, the body mandated with customs recordation of IP rights is the U.S. Customs and Border Protection (CBP), in the UK it is the tax/revenue authority HMRC, in China it is the General Administration of Customs in China (GACC), and in the European Union it is the customs department of the relevant member state.
Kenya’s recordation process, is essentially a blanket recording process where IP owners rights are recorded on a register, different, for example, with the EU recordation process which is a request to act (referred to as a Application For Action AFA) essentially a request to border and customs authorities where there is suspicion of imported conterfeits.
Though a recordation process could hamper free trade in form parallel importation and dealing in gray goods, helpfully, the 2021 Recordation Regulations provide a process for notification of intended importation by ‘a person other than the registrant’. Kenya’s IP laws, covering patents and trade marks among others, do not outlaw parallel importation, recognising ‘international exhaustion’ of a right holder’s IP rights once IP-protected goods have been legitimately placed on the market anywhere in the world.
Notably, the recordation regulations do not repeal the provisions under the Anti Counterfeit Act of notifying the customs authorities (KRA) and the Executive Director of the ACA of suspected counterfeit imports. Under this process, detailed in section 34 of the Anti Counterfeit Act, an owner of IP rights can apply to the Commissioner or Excutive Director for seizure of suspected counterfeits, and the subject goods may be seized by the customs authorities.
Overall, though not mandatory for the anti-counterfeit authorities to act in respect of counterfeits or suspected counterfeits, recordation of IP rights is more likely to result in enforcement actions as far counterfeit imports are concerned, and is therefore worthwhile for cross-border traders.
To obtain a recordation of intellectual property rights, the following information and documents are to be submitted to the Anti Counterfeit Authority:
- Name of owner of the IP right
- Address details of the IP right owner: postal, email, physical addresses
- Telephone number of IP right owner
- Details of IP right owner and association
- Name, telephone number and address (email, postal, physical) of IP right owner’s agent or local distributor
- Sample or picture representation of the goods subject of the IP right
- Name and address of each foreign person or business entity authorized or licensed to use the intellectual property right
- Identity of any parent or subsidiary company or other foreign company under common ownership or control which uses the intellectual property right abroad
- Place of manufacture of goods bearing the relevant IP right
- Recordation fees: USD 90 for 1st class, USD 10 for each subsequent class (akin to trade mark registration system)
IP right holders such as trade mark owners can apply through IP agents like ourselves for recordation of their IP rights with the Anti Counterfeit Authority.
Photo by Ian Taylor on Unsplash