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In Kenya, copyright law is pivotal in safeguarding the rights of creators and encouraging innovation across diverse fields, including literature, music, and the arts. While copyright protection is automatically granted upon the creation of an original work, registering it with the Kenya Copyright Board (KECOBO) and enforcing these rights presents several challenges. This article explores the registration process, highlights recent cases of copyright infringement, and discusses the difficulties in enforcing copyright in Kenya.

The Process of Registering Copyright in Kenya

1. Understanding Copyright in Kenya:

Kenya’s copyright protection is governed by the Copyright Act, 2001 (revised in 2019), which outlines the rights of authors and creators over their works. These rights include reproduction, distribution, performance, and public display. Although copyright is automatically conferred upon creation, registering it provides additional legal benefits and serves as evidence in disputes.

2. Registration Process:

• Preparation of Materials: To register a work, creators must prepare relevant materials, including a copy of the work, a completed application form, and proof of identity. The work can be in any fixed medium, such as a written manuscript, a recorded performance, or digital content.
• Application Form: The application is submitted to KECOBO, detailing the work, its author, and the nature of the copyright claim. Accurate information is crucial to avoid delays or rejections.
• Submission: Applications can be filed online through KECOBO’s website or in person. Online submissions are recommended for their efficiency.
• Examination: KECOBO examines the application to ensure it meets the requirements. This involves verifying eligibility for copyright protection and the accuracy of the provided details.
• Issuance of Certificate: Upon successful examination, KECOBO issues a registration certificate. While registration is not mandatory, the certificate is valuable as it serves as evidence of copyright and can be critical in legal disputes.

3. Fees: Registration involves a fee, which varies based on the type of work and the registration specifics. For the latest fee structure, one should consult KECOBO’s website or contact their office directly.

Challenges in Enforcing Copyright in Kenya

1. Infringement and Piracy:

• Prevalence: Copyright infringement, particularly piracy, is a major concern in Kenya. Unauthorized copying and distribution of creative works are widespread. For instance, in recent years Kenyan musicians, including prominent artists such as Nonini (Hubert Nakitare), have experienced issues with unauthorized use of their music on various online streaming platforms. Despite having their works registered, they faced challenges in removing the infringing content and obtaining fair compensation. Nonini has however recently succeeded in enforcing his copyright against a prominent electronics company and digital influencer.
• Legal Framework: Although Kenya’s Copyright Act provides robust protections, enforcing these rights can be challenging. The legal framework needs continuous updates to address emerging issues, particularly in the digital age.

2. Enforcement Mechanisms:

• Judicial System: Enforcing copyright often involves navigating Kenya’s judicial system, which can be time-consuming and costly. For instance, the case of renowned author Grace Ogot highlighted the difficulties of legal recourse. Ogot’s works were found being reproduced and sold without her consent. The legal process was prolonged, illustrating the obstacles faced by creators seeking justice.
• Lack of Awareness: Awareness about copyright laws is often limited among the public and even among creators. This lack of understanding can lead to inadvertent infringements and difficulties in asserting copyright claims.

3. Resource Constraints:

• Limited Resources: KECOBO and other enforcement agencies often face resource constraints, impacting their ability to effectively monitor and address infringements. For example, KECOBO’s efforts to tackle digital piracy are hindered by limited technological and financial resources.
• Training and Capacity Building: Enhancing the capacity of enforcement agencies and the judiciary through targeted training and increased resources is essential but requires significant investment.

4. Digital Challenges:

• Global Nature of the Internet: The global nature of the internet complicates enforcement. For example, in the case of digital content distribution by international platforms, Kenyan copyright holders must often rely on international cooperation to address cross-border infringements effectively.
• Rapid Technological Changes: The fast-paced evolution of technology often outstrips existing copyright laws. The rise of new digital formats and distribution methods requires ongoing updates to legal frameworks and enforcement strategies.

Conclusion

While registering copyright in Kenya is a relatively straightforward process, enforcing these rights poses significant challenges. Recent cases, such as Nonini’s recent copyright infringement win, highlight the need for more effective enforcement mechanisms. Addressing these challenges requires increased awareness, enhanced resources, and international collaboration. By improving these areas, Kenya can better protect its creative sector and support the continued growth of innovation and artistic expression.

*The information in this article does not constitute actionable legal advice. For further information, please contact us via email at info@lehmann.co.ke

Kenya has steadily developed its intellectual property (IP) framework, with patent law playing a pivotal role in fostering innovation and economic growth. As the country embraces digital transformation and seeks to establish itself as a regional tech hub, the importance of patent protection has become increasingly apparent. This article explores the current state of patent law in Kenya, highlighting its key features, challenges, and future prospects.

Legal Framework
Kenya’s patent regime is primarily governed by the Industrial Property Act, 2001 (revised in 2022), which is administered by the Kenya Industrial Property Institute (KIPI). KIPI oversees the registration, examination, and protection of patents, as well as utility models and industrial designs. Kenya is also a signatory to various international treaties, including:

• The Paris Convention for the Protection of Industrial Property
• The Patent Cooperation Treaty (PCT)
• The ARIPO Harare Protocol (administered by the African Regional Intellectual Property Organization).

These treaties allow Kenyan inventors to file for international protection and enable foreign inventors to secure patent rights in Kenya.
Patentability Criteria
To qualify for patent protection in Kenya, an invention must meet three key criteria:

• Novelty: The invention must be new and not previously disclosed to the public.
• Inventive Step: The invention must involve a step that is not obvious to someone with knowledge in the relevant field.
• Industrial Applicability: The invention must be capable of being used in some kind of industry.

Patents in Kenya are granted for a maximum of 20 years, subject to the payment of annual renewal fees. There is also provision for utility models (petty patents) that offer protection for less complex inventions for up to 10 years.
Challenges Facing Patent Law in Kenya
Despite the existence of a well-established legal framework, several challenges persist in Kenya’s patent regime:

• Lack of Awareness: Many inventors, particularly those in the informal sector, are not fully aware of patent protection or the process of filing for patents. This leads to missed opportunities for securing IP rights.
• High Costs: The cost of patent registration, including attorney fees, examination fees, and renewal costs, can be prohibitive for individual inventors and small businesses. This financial barrier discourages many from pursuing patent protection.
• Backlogs and Delays: KIPI has faced challenges in processing patent applications due to limited resources and staffing constraints. This has resulted in significant delays in granting patents, which can hinder the commercialization of inventions.
• Enforcement Issues: While Kenya’s legal framework is sound, enforcement of patent rights remains a significant challenge. Infringement cases can be difficult to prosecute, and the judicial system lacks specialized IP courts, leading to protracted litigation.
• Fragmented Research and Development (R&D): Kenya’s research institutions often operate in silos, and there is limited collaboration between academia, government, and industry. This hampers the commercialization of innovations and the growth of patentable inventions.

Recent Developments
In recent years, there has been a noticeable shift towards strengthening Kenya’s patent system:

• Automation and Digitalization: KIPI has begun implementing digital tools to streamline the patent application process. This is expected to reduce processing times and enhance accessibility.
• Public-Private Partnerships: Collaborations between the government, private sector, and academia have begun to promote innovation in key sectors such as agriculture, health, and clean energy. Initiatives like the Kenya National Innovation Agency (KENIA) are designed to bridge the gap between research and commercial application.
• Patent Examination Capacity: Training programs for KIPI’s examiners, supported by international partners such as WIPO and ARIPO, are helping to improve the quality and speed of patent examination.

Opportunities and Future Outlook

Kenya’s patent law framework is positioned to support the country’s ambitions to become a knowledge-based economy. The emerging opportunities lie in sectors such as:

• Tech and Innovation Hubs: With Nairobi often dubbed the “Silicon Savannah,” tech start-ups are increasingly seeking patent protection for software, fintech, and other digital innovations.
• Pharmaceutical Patents: As the global pharmaceutical industry grows, there is an opportunity for Kenya to develop its local pharmaceutical R&D capabilities and leverage patent protection to foster growth in this sector.
• Agricultural Innovations: Kenya’s reliance on agriculture presents an opportunity for innovations in agri-tech, with patents playing a crucial role in safeguarding these inventions.

However, for Kenya to fully realize its potential in the patent space, concerted efforts are needed to address the existing challenges. This will involve increasing public awareness of IP rights, investing in patent examination capacity, reducing costs, and ensuring more effective enforcement mechanisms.
Conclusion
Patent law in Kenya is at a critical juncture. While there is a robust legal framework in place, there are still several hurdles that need to be overcome for the country to harness the full potential of patents in driving innovation. As Kenya continues to modernize its IP infrastructure and foster a culture of innovation, the patent system will undoubtedly become a key driver of economic growth and development in the years to come.
*The information in this article does not constitute actionable legal advice. For further information, please contact us via email at info@lehmann.co.ke

Registered trademarks are increasingly becoming popular in Kenya as an effective tool to differentiate and protect brands.   The operative law is the Trade Marks Act, Chapter 506 Laws of Kenya (“the Act”). The first registration period is ten (10) years which can be indefinitely renewed for further periods of ten (10) years after the expiry of the first registration or of the last renewal. The Act describes a mark to include “a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.”

Why formally register a trademark?

• Trademarks distinguish goods (and services) from other similar products by differentiating them in the eyes and minds of the average consumer. They protect the goodwill and reputation of the respective business entities that own them.  They also prevent confusion, helping consumers identify the trademarked products or services as those belonging to a particular business entity that they would want to associate with.

• Registration of a trademark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempting to ride on the goodwill of your mark. It enables you to enforce your rights and protect them more easily in case someone was to challenge them since the burden is on the challenger to prove any rights in a dispute.

• The process of registration with its thorough checks for conflicting trademarks ensures that you have a unique mark that does not resemble any other party’s mark and in so doing helps one avoid infringement of other parties’ rights. In a dispute, the burden is on the challenger of the registered trademark to prove ownership.  The use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it.  A registered trademark is also an invaluable asset for business expansion especially so through licensing.

WHAT TYPES OF MARKS CAN BE REGISTERED IN KENYA

In order for a trademark (other than a certification mark) to be registrable in Kenya under the Act it must contain or consist of at least one of the following essential particulars:-

• The name of a company, individual or firm, represented in a special or particular manner;
• The signature of the applicant for registration or some predecessor in his business;
• An invented word or invented words;
• A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
• Any other distinctive mark.

There are marks that need special permission prior to registration such as those that may contain the colors of the national flag of the Republic of Kenya, and others that are not registrable such as those that may offend public policy.

METHODS OF TRADE/SERVICE MARK REGISTRATION IN KENYA

(1)       NATIONAL REGISTRATION: If you just want to register your Trademark in Kenya alone, it is sufficient to apply for a national registration at the local trademark office.

(2)       INTERNATIONAL REGISTRATION (MADRID SYSTEM): If you already have filed a trademark application or have a trademark registration in one or more countries of the Madrid Union (based on the Madrid Agreement and Madrid Protocol), you can obtain trademark protection in multiple countries by filing one single application.

PROCESS OF TRADE/SERVICE MARK REGISTRATION IN KENYA

(1)       A trademark application must be brought to the Trademark Office at the Kenya Industrial Property Institute (KIPI) by a local agent in the prescribed form.  A power of attorney is necessary.

(2)       An applicant will start by filling out a form that appoints the applicant’s trademark agent who then conducts a preliminary search for the availability of the mark for full registration.

(3)       The preliminary search is carried out to find out whether the trademark is registrable or not and whether a trademark that could be confused with the intended trademark exists.

(4)       Where the mark is found fit for registration after search, a full application for registration is made to the Registrar in the prescribed form accompanied by seven (7) representations of the mark. A single application may cover more than one class.  Classes are the Kenyan categories for goods and services as recognized by KIPI.  KIPI recognizes and uses the NICE Classification of Goods and Services as developed and published by the World Intellectual Property Organization (WIPO).

(5)       Disclaimer in trademark: A disclaimer is a statement indicating that a certain word or portion of a trademark is not protected separately and apart from the mark as a whole.  This means that it is possible to have in your trademark parts or words that are generic or commonly used in the trade for those products with the understanding that you have no monopoly over it/them and thus no right to bar others from using those words.  An example here would be “Dabilu Mineral Water”; the disclaimer would cover the words “mineral water”.  Having a disclaimer does not however mean that you can never use the disclaimed portion as part of your mark.

(7)       Once the mark is examined as to distinctiveness and approved/accepted, it will be published in the monthly Industrial Property Journal of KIPI (an online publication) for sixty (60) days to allow any interested party an opportunity to raise objections to the pending application prior to registration.

(8)       An opposition to the trademark application may be lodged within sixty (60) days from the date that the advertisement of the trademark application has been published.  The extension of the opposition period is possible at the discretion of the Registrar for a maximum of ninety (90) days.  If there is no opposition to the mark within the prescribed time, a Certificate of Registration is issued to the applicant, making the applicant the officially registered proprietor of the mark.

(9)       The registration may be canceled if the trademark was registered without any bona fide intention to use the trademark, or if it has been no bona fide use of the trademark up to one (1) month before the date that the application for cancellation has been submitted.  The registration may also be canceled if there has been no bona fide use of the trademark for a continuous period of five (5) years and one (1) month until the date of application for cancellation.

(10)     Permitted use by a third party cannot be accepted by the proprietor unless the user has been recorded as a licensee.  In Kenya licensing is recognized and license agreements must be duly registered at KIPI.  The license agreement must be provided for quality control by the licensor.  The use of a registered trademark without the license of the registered proprietor constitutes infringement.  Assignments are also permitted and can be made with or without the goodwill of the business.  The requirements for assignment are:

1. A properly executed Deed of Assignment.
2. Power of attorney from the assignee.

WHO CAN FILE FOR A TRADE/SERVICE MARK

An individual, a company, or any lawful association can apply for a trademark provided they meet the requirements of the Act.

*The information in this blog does not constitute actionable legal advice. For further information, please contact us:

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The Kenya Copyright Board (https://www.copyright.go.ke/) is conducting a survey to determine whether to form a new Collective Management Organization (CMO) for the publishing sector or to revive the Reprographic Society of Kenya (KOPIKEN). The deadline for public participation is Tuesday May 19, 2020. Follow this link to participate: https://buff.ly/3fOGFOf

The Ministry of Lands and Physical Planning of the Republic of Kenya recently published its intention to roll out a new property registration process. The simplified 3-step process is largely online and is set to take approximately 12 days. The process of land transfer and registration in Kenya is bound to be much easier and faster when this re-engineered process is operationalized.

THE KENYA INTELLECTUAL PROPERTY BILL, 2020 has been published and subjected to public participation before it goes further along the path towards becoming law. Among other things, the bill seeks to collapse the Kenya Industrial Property Institute (KIPI) which administers trademarks, patents and related matters, the Kenya Copyright Board (KECOBO) which administers copyright and related rights and the Anti-Counterfeit Authority (ACA) into one body – the Intellectual Property Office of Kenya. For streamlined and more direct public participation, the Strathmore University Center for Intellectual Property and Information Technology Law (CIPIT) has opened up its Jadili Platform for all who are interested in sharing comments in support of or against the bill. For a draft of the bill and to access the CIPIT Jadili platform, please follow the link: https://blog.cipit.org/2020/05/11/the-kenya-intellectual-property-bill-2020-an-open-public-participation-call/