Kenya: Anti-counterfeit Bill published

The Anti counterfeit Bill, 2008 has been published for introduction to the National Assembly. According to the memorandum of objectives and reasons, the Bill seeks to “prohibit trade and all manner of dealings in counterfeit goods”. An electronic version of the Bill is available here.

The Bill appears to be more of an arm for enforcing against infringement of IP rights available under various pieces of law in Kenya. The provisions of the Bill also seems to be geared towards domestication or fulfilment of the requirements of part III of the TRIPS agreement, which in essence obligates members to put in place enforcement procedures and remedies to deter infringement of intellectual property rights.

The Bill defines counterfeiting in terms of various actions done “without the authority of the owner of any IP right subsisting in Kenya or elsewhere in respect of protected goods”. The Bill further recognizes intellectual property right as any right under (a) the Copyright Act, 2001, (b) the Seeds and Plant Varieties Act (plant breeders’ right), (c) the Trade Marks Act and (4) the Industrial Property Act, 2001[patent, utility models and designs]. Considering that IP rights are territorial, it does not make sense why the Bill would require an IP right to subsist “in Kenya or elsewhere”.

It is evidently clear that the Bill is heavily in favour of IP right holders; indeed going to the extent of laying down certain presumptions in favour of the right holder in as far as tendering evidence is concerned. For example, where a person lays a complaint against some counterfeiting activity and the existence of an IP right becomes an issue, the Bill requires that the complainant be presumed to be the owner of that right until the contrary is proved.

Anti-Counterfeit Agency

The bill also provides for the establishment of an Anti-Counterfeit Agency to oversee implementation of the Bill once enacted into law. In order to attain the objectives of the Bill, the Agency is expected (among other functions) to (1) educate the public on matters relating to counterfeiting, (2) combat counterfeiting and trade in counterfeit goods in Kenya (3) co-ordinate with other regional and international organizations involved in combating counterfeiting. This last mandate is quite interesting taking into consideration the Anti-Counterfeiting Trade Agreement being secretly negotiated by some developed countries. What if the negotiating countries establish the proposed governing body in the league of WTO or WIPO? Would this provision in the Bill be deemed to have inadvertently anticipated or recognized such a body and in the process putting an obligation on the Kenyan Agency to co-ordinate with such an international governing body?

Inspectors
Clause 22 of the Bill proposes appointment of inspectors who will be mandated to enforce the provisions of the Bill. In performing their duties under the Bill, the inspectors notably have been given massive powers including full police powers.

The powers of the inspectors, captured in clause 23, for example include authority “at any reasonable time” to enter and inspect any place or vehicle “reasonably suspected” to have counterfeit goods. The inspectors also have the power to search, detain and arrest, without a warrant, any person suspected of having committed any of the offences prohibited under the Bill.

Whereas the Bill provides for the inspectors to be appointed in writing, the proposed pool of candidates for appointment as inspectors is worrying, and may give rise to conflict of interest and abuse of the system. The pool includes trade development officers, industrial development officers, trade mark and patent examiners who because of the nature of their work have the mandate of making certain decisions in their respect roles. There is danger that giving these officials additional roles more so the duty of enforcing IP rights may open a can of warms, in light of the sweeping powers enjoyed by an inspector under the provisions of the Bill.

Boarder measures
Another notable inclusion in the list of inspectors is customs officers, who under the directions of the commissioner customs or acting on his own initiative may seize and detain all suspected counterfeit goods, which are being imported into Kenya. In the same breath, the Bill however safeguards against wrongful detention of goods by providing that any person who suffers damage or loss as a result of false or negligent seizure is entitled to claim compensation.

Penalties
Some of the proposed penalties for those convicted of counterfeiting offences include:
· For a first offence- 5 years imprisonment and/or a fine of not less than 3 times the value of the prevailing retail price of the goods.
· For a second and subsequent offence- 15 years imprisonment and /or a fine not less than 5 times the value of the prevailing retail price of the goods.

After combing through the Bill and not finding a definition for the phrase “prevailing retail price of the goods”, Afro Leo wonders whether that phrase means the retail price of the counterfeit goods.

Hopefully some of the anomalies will be rectified before the Bill is enacted into Law.