Kenya requires mandatory recordal of IP rights for imported

The ACA announced in Notice No. 1/2022 issued on April 26 of this year that from July 1, 2022, any goods imported into Kenya will need to be filed with the ACA, regardless of where the intellectual property rights are located.

On May 23, the ACA issued Notice No. 2/2022, which extended the deadline for submitting mandatory filings to January 1, 2023. IP filings will be processed through the Anti-Counterfeiting Authority Integrated Management System (AIMS). This means that as of that date, any person importing goods and the owner of intellectual property rights must file with the ACA for such rights.

All companies will be required to file IPRs for branded imports regardless of the origin of the goods, with exemptions for unfinished products and unbranded raw materials. Violators will be guilty of a crime and can be fined and imprisoned for up to 15 years.

Upon successful IPR filing, the ACA will issue a certification mark in the form of a tamper-evident device. If the absence of such a security device is discovered, the ACA may seize and destroy the merchandise.

The information and documents required to be submitted for IPR filing include：

1. The type of IPR to be filed (trademark, industrial design, patent, utility model, copyright, etc.). For trademarks, the Nice classification corresponding to the registration certificate should be selected; for industrial designs, the applicable Locarno classification provided in AIMS should be selected. In addition, IP rights holders shall not be compelled to file all registered IP rights related to one product.

2. details of the IPR, including name, registration number and expiration date, together with a certified copy of a valid IPR registration certificate

3. details about the manufacturer, foreign entity, parent company, subsidiary and licensee (if any)

4. Detailed information about the product, including product name and product description, and upload clear representative drawings of all products traded under the registered IPR, including all models and variants.

5. Certified copy of passport/ID card in case of individual application for filing; full details of partners, certified copy of their passport/ID card and partnership business license in case of partnership application for filing; company details and certified copy of company business license in case of company application for filing; signed power of attorney in case of proxy submission.

The official fee for IP filing is $90 for the first class and $10 for each subsequent class of trademark or industrial design. IPR types without multiple classes are $90 per piece.

IP filing entries will be processed through the Anti-Counterfeiting Administration Integrated Management System (AIMS). In addition to filing, AIMS will provide filing renewals, changes in details, filing database searches, and facilitate registration of agents. The AIMS portal will be accessible to all parties, including IP owners and their agents, consumers, importers, and even suspects in counterfeiting cases.

Any filing completed on the AIMS system is valid for 12 months and will be reviewed by the ACA within 30 days of the initial application. Filings are valid for 12 months and renewal applications must be submitted at least 30 days prior to expiration for a renewal fee of $50.

If the IP owner changes his or her name or changes ownership, the party filing the IP is required to notify the ACA accordingly, and if the IP owner decides to use an agent to manage the filing process, he or she must ensure that his or her designated agent is registered with the ACA.

The official ACA notice can be found at https://aca.go.ke/recordation/commencement-of-recordation-of-ipr

Kenya is currently the largest market and distribution center for counterfeit goods in East Africa, and the problems of smuggling, tax evasion and importation of counterfeit products are becoming increasingly prominent. The proliferation of counterfeit goods not only jeopardizes the regularity of the goods market and harms the interests of consumers, but also has a huge impact on the local manufacturing industry.

The new requirement of compulsory IPR filing makes Kenya the second African country after South Africa to adopt IPR filing.