Recordation of IP Rights with the Anti-Counterfeiting Authority (“ACA”)
Under the Anti-Counterfeit Act and as of January 1st, 2023, it will be an offense to import goods bearing IP rights that have not been recorded with the ACA.
Having said that, the ACA announced the launch of the Anti-Counterfeit Authority Integrated Management System or “AIMS” on 28 February 2022 and, thereafter, adopted a three phases implementation approach, in an attempt to prevent importation of counterfeit goods into Kenya.
The ACA's AIMS portal for the recordation of trademarks was officially launched on June 15, 2022. It is now operational and brand holders can begin to record their trademarks now ahead of the January 1st, 2023 implementation date for the legal recordation requirement (see the Public Notice extending the July 1st, 2022 initial deadline).
What type of IP rights are to be recorded with ACA?
In theory, all trademarks, patents, utility models, industrial designs, copyrights, or any other registered intellectual property right, irrespective of their place of registration, for all goods to be imported into Kenya.
In practice, when asked about it, ACA explained that recordal should be limited to the company’s most important trademarks (including the “house mark”), as the management of large IP portfolio would be too challenging.
No recordation is necessary for the import of raw materials that are unbranded and for goods manufactured in Kenya – which may be recorded voluntarily however.
What is the recordation process?
Although the process still lacks clarity at the moment, we know that upon approval of an application, the applicant will receive a recordation certificate and the ACA should issue a certification mark in the form of an anti-counterfeit security device. This will be implemented later.
The ACA must be informed of ownership trademarks changes. The recordation shall remain valid for a period of 12 months and it will be subject to annual renewal.
Please see below the three steps to be followed with the assistance of a registered agent:
What do trademark holders risk if they do not register their trademark with the ACA by January 1st, 2023?
The new Anti-Counterfeit Act provides for criminal prosecution, seizure and destruction of the imported goods on which the unrecorded marks are found. However, the ACA clearly explained that at the early stages their main goal is rather to compile statistics & data and encourage brand owners to have a registration on file in preparation for the next phase of the system.
All the INLEX MEA team remain at your disposal to accompany you with this transition. Please do not hesitate to contact us for more information and tariffs.