Mandatory Recordation of Intellectual Property Rights as of 1 July 2022

“deadline extended to 1 January 2023”

Kenya’s Anti-Counterfeit (Recordation) Regulations 2021 requires Intellectual Property rights (“IPR”) owners who import goods into Kenya to record their IPR with the Anti-Counterfeit Authority (“ACA“).  We attach the Public Notice No. 1/2022 dated 26 April 2022 announcing the commencement of Recordation of IPR as from 1 July 2022 and Public Notice No. 2/2022 extending this commencement deadline to 1 January 2023.  

With the exception of the importation of raw material or “items used as ingredients in the manufacture of goods“, Recordation will be mandatory, as provided for in Section 34B of the Anti-Counterfeit Act, no. 13 of 2008. While this definition does seem to cover a wide range of products inclusive of machinery components, parts, and accessories further advice is recommended on such Imports.

The term “Intellectual Property Right” (IPR) defined under the Anti-Counterfeit Act, 2008 includes:

• • Any right protected under the Kenyan Copyright Act, 2001;
  • Any plant breeders’ right granted under the Kenyan Seeds and Plant Varieties Act;
  • Any right protected under the Kenyan Trade Marks Act and;
  • Any right protected under the Kenyan Industrial Property Act, 2001.

Furthermore, the Anti-Counterfeit Act recognises IPR’s registered outside Kenya.

Requirements and Obligations

• • Annual renewals of Recordations will be required and any changes to the Registrant are on application to the ACA;
  • Anticipated time frames for Recordation are 35 – 40 days.  While the deadline has been extended by six months to 1 January 2023 IPR owners are advised to continue with the application process as soon as possible.
  • The security device is to be issued to importers of goods whose IP has been recorded with the ACA;
  • Presently the importation of goods not recorded will be an offence.

Either the IPR owner, authorised agent or licensee may apply for the Recordation to include:

• • Name and address of IPR owner;
  • Name and address of authorised importers;
  • Name and address of manufacturer;
  • Original simply signed Power of Attorney form;
  • Photographs of the protected goods;
  • Description of the IP and description of the goods;
  • Details of the place of manufacture of the goods;
  • Certified copies of the certificates of registration for the IP;
  • A copy of the certificate of incorporation of the applicant; and
  • The Applicant’s Tax registration number.

Please contact the Werksmans Intellectual Property Team for further assistance.

Donvay Wegierski  and Monique Le Roux