UNIVERSITY OF NAIROBI

UNIVERSITY EXAMINATIONS 2019/2020

EXAMINATIONS FOR THE DEGREE OF BACHELOR OF LAWS

GPR 411 INTELLECTUAL PROPERTY LAW

DATE: AUGUST 14, 2020 TIME: 24 HRS From 2.00 PM –

TO 2.P.M. AUGUST 15,

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INSTRUCTIONS

1. This is an open book online examination.

2. Answer either Question 1 or Question 2 and any two (2) questions from questions 3 to 6.

3. Questions 1 and 2 carry 30 marks each. The other questions carry 20 marks each.

4. Answer clearly, accurately, reference and cite appropriate authorities.

5. Plagiarism is prohibited and the work will be subjected to plagiarism check.

Answer question 1 OR 2

Question 1

1. With Answer clearly, accurately, reference and cite appropriate authorities.

2. Plagiarism is prohibited and the work will be subjected to plagiarism check.

With the aid of constitutional, statutory, case law, anecdotes and academic authorities discuss the
meaning and significance of any one or more of the following in Kenya and Africa or from an
Afro Kenyanist perspective: trade mark infringement, passing off, unfair competition, trade mark
dilution, trade in counterfeit products. (30 marks)

Introduction
Article 15 of the Agreement on Trade related aspects of Intellectual Property Rights (TRIPs) 1
defines a trademark (TM) as any sign, or any combination of signs, capable of distinguishing the
goods or services of a person from those of other person/s. Therefore, serves as a source of
visibility and reputation. For an artificial person, TL is a strategic asset more so in cases of
competition on the basis of product differentiation and customer loyalty.
The primary economic function of trademarks is not – as with patents – to give firms incentives
to invest in research and development, but to signal quality and good will, to enhance efficiency
by reducing consumer search costs, and to support firm branding efforts
Constitutional Basis
Article 40 of the Constitution2 guarantees that every person has the right to acquire and own
property. Instructively, property includes intellectual property. It therefore follows that the
government has a statutory duty to support and safeguard IP of its citizens. This includes
trademarks protection. In addition, Article 46 (2) the Constitution3 empowers the legislature to
pass laws to provide consumer protection and for fair, honest and decent advertising. This
indicates that this is a major way of combating counterfeits product in Kenya

Statutes

The Trademarks Act Cap 506 (amended in xxxx)

Under section 2 of this Act a trademark is a distinctive sign or indicator used by an individual,
business organization, or other legal entity to identify that the products or services to consumers
by distinguishing its products or services from those of other entities. As shown; in the case of
Brooke Bond (Kenya) Ltd. v. Chai Ltd 42, where the defendant had represented their
packaged
tea in green packaging similar to that of the plaintiff. The defendant had also used the words
1
‘WTO | Intellectual Property (TRIPS) - Agreement Text - Standards’
<https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm#2> accessed 14 August 2020.
2
‘The Constitution of Kenya, 2010.Pdf’.
3
ibid.
"green label tea" just as the plaintiff had. The suit failed to meet the standard for trade mark
infiingement as the court considered the words used to be descriptive of the type of tea and not
original and distinctive as required by the trademarks Act cap 506. The Act under section 4
provides for the registration of trademarks and section 5 clearly gives the effectiveness of
registering trademarks, as urnegistered trademark is not protected under the Act even though it
doesn't affect passing off rights of a product. Also the above case of Brooke Bond (Kenya) Ltd
V. Chai Ltd (supra 35) court stated that the defendant was, liable for passing off because the
general (trade) dress of the goods was similar to the plaintiffs even though it did not met the
trademarks requirements of distinctiveness. Hence a registered trademark holder who meets the
requirements of trademarks protection is able to recover damages from inf ringers who use marks
that are similar or almost similar to the registered mark with the likelihood of causing confusion
to the consumer's eye. Section 14 prohibits the registration of deceptive marks, while section 15
prohibits the registration of identical and resembling trade marks. So products and services likely
to deceive consumers or cause confusion, or resembling existing trademarks do not qualify and
will not be registered. More so section 58 of the Act defines counterfeits as forgery of registered
h·ademarks without owners consent and with intention to deceive and provides a fine of ten
thousand shillings or imprisonment not exceeding five years. The same penalty applier's to a
person who sells counterfeit goods. However the Trademarks Act cap 506 being the most
frequently used legislation to deal with trademarks protection and infringement issues in Kenya
has the poorest provisions of the penalties against counterfeits products. As ten thousand Kenya
shillings as a fine to counterfeit offence is too little such anybody can afford it and it is not
detenent at all to counterfeits manufachirers and distributors.

The Industrial Protection Act 2001

Under part twelve of the Act provides for industrial designs, which in section84. (1) means any
composition oflines or colours or any three dimensional form, whether or not associated with
lines
or colours; provided that such composition or form gives a special appearance to a product of
industry or handicraft and can serve as a pattern for a product of industry or handicraft. However
section 84 (2) clearly states the protection under this Act shall not extend to anything in an
industrial
design which serves solely to obtain a technical result. So this fall squarely under the trademarks
protection which is provided for marks, symbols, logos, certain colours usage as per
the trademarks
Act cap 506 of Kenya. So the Act has protected industrial designs which are parts of tt·ademarks
in
unique way which needs to be broadened to strengthen laws governing trademarks protection
without
divisions and confusion.
More so section 109 (2) of the Act provides any intentional infringement of a registered
industrial
design shall constitute an offence under this Act. Such an offence upon conviction shall be
punishable with a fine of not less than one hundred thousand shillings, and not exceeding five
hundred thousand shillings, or with imprisonment for a term of not less than three years, and not
more than five years, or with both. This punishment is not much effective either so there is need
for it to be increased to a level where people dealing with counterfeits products are threatened by
its provision. This Act also need to be ham10nized with the trademarks Act cap 506 in order to
form a fom1idable legislation dealing with counterfeits products problems in Kenya.
3.3 The Trade Descriptions Act cap 505 (amended in 2010)
First of all, under section 3 any person who, in the comse of any trade applies a false trade
desc1iption to any goods or supplies or offers to supply any goods, to which a false tt·ade
description is applied, shall be guilty of an offence. It was passed to prohibit mis description of
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goods, services, accommodation and facilities provided in the course of trade hence prohibiting
counterfeiting. As per section 9(1)(e) which defines false, trade description includes any mark
. made to so nearly resemble a registered trade mark or monogram as to be likely to deceive.
More
so under section 25 (1) The fact that a trade description is, or is paii of, a trade mark within the
meaning of the Trade Marks Act does not prevent it from being a false trade description when
applied to any goods falsely. Hence it is a leading statute in combating counterfeits trade in
Kenya. Under section 15 it provides a penalty of a fine not exceeding two million shillings or to
imprisonment for a term not exceeding five years, or to both such fine and imprisonment for a
person found guilty under the Act. So far this is the only statute that gives a slight higher
deterrent and punitive sentence and it is administered by the Department of Weights and
Measures within the Ministry of Trade and Industry to eradicate cases involving trading in
counterfeit goods in Kenya. However this punishment even if deterrent compared to other law
statutes fighting counterfeits is not so severe to stop counterfeiting trade as they make billions
compared to the two millions fines.
3.4 The Anti Counterfeit Act 2008
This Act came into force in the 2008 establishing an agency and a strong legal framework to
prevent counterfeit goods, under section 3. However section 5 of the Act establishes its
functions which are mainly to combat counterfeit products trade in Kenya and more so
encourage foreign organization union in the aim of defeating counterfeiting. Even though the
agency is still establishing itself in eliminating counterfeits production in Kenya, it is still
struggling with the challenge of insufficient resources while carving out its role. Part Four of
the Act provides the power to inspect goods suspected to be counterfeits products. As per section
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23(1) which gives an inspector power to enter at any reasonable time to a premise to inspect
goods with or without a search warrant, seize and detain counterfeits goods if they are there.
Also part five under section 32 states it is an offence to poses counterfeits, manufacture
counterfeits, exhibit and distribute them for the purpose of trade. However under part six, section
35 (1) (a) of the Act provides a penalty for a first conviction, to imprisonment for a term not
exceeding five years, or to a fine, in respect of each article or item involved in the
particular act of dealing in counterfeit goods to which the offence relates, not less than
three times the value of the prevailing retail price of the goods, or both; while section 35
(1) (b) of the Act increases the penalty in the case of a second or any subsequent conviction,
to imprisonment for a term not exceeding fifteen years, or to a fine, not less than five times
the value of the prevailing retail price of the goods, or both. So this is a clear loophole that the
Act is not entirely intended to eliminate counterfeits completely as the section creates room for
second te1m offenders, by providing an extremely heavier penalty compared to first time
offenders.

Lusaka Agreement The Lusaka agreement was signed 1976.144 It established ARIPO. One of
the objectives for the establishment of ARIPO was to create common organs to coordinate,
harmonize and develop the industrial property activities of the member states.145 The ARIPO
secretariat runs its day to day affairs. The ARIPO secretariat is based in Harare, Zimbabwe.
ARIPO administers the Banjul protocol. The protocol provides for a regional trade mark
registration system. The ARIPO trade marks register provides a data base for all the regional
registrations. This is important for trade mark owners when it comes to enforcement of their
rights. They can apply and be issued with searches to prove ownership of their trade marks.

Trade Descriptions Act231 TDA provides for offences related to trade descriptions. Trade marks
are used to identify goods and services in the market. Trade marks are a form of trade description
in that they give information on the origin of goods or services. It is an offence to apply a false
trade description to goods or services.232 It is also an offence to give a false indication that any
goods supplied by a person are of a kind supplied by another.233 It is also an offence to make a
false statement as to the provision, nature, time or manner of the provision of services.234The
importation of goods bearing false indication of source is prohibited.235 Conviction of any of
these offences attracts a penalty of imprisonment of up to five years
or a fine of Kshs two million.236
False trade description is defined to include use of trade marks to goods.237 Trade marks
contained in trade descriptions can be false trade description when applied to goods.238
TDA is enforced by inspectors appointed under the Weight and Measures Act.
239 These
inspectors have powers to seize and detain goods to which a false trade description is
applied.240 The seized goods should be returned to the owner if no action is taken within a
period of three months.241 However, in the event of conviction the goods are forfeited to
the government.242The inspectors have powers to arrest without a warrant any person
suspected of having committed an offence under the TDA.243 The inspectors also conduct
prosecution of offences committed under the TDA.244

Standards Act245
The Standards Act establishes KEBS to promote standardization in industry and commerce.
KEBS controls the use of standardization marks and distinctive marks.246 A standardization
mark is a mandatory certification scheme for locally manufactured goods.247 This mark cannot
be similar to a trade mark registered under the TMA.248 Any person who desires to manufacture
goods under the standardization mark is required to apply for a permit from KEBS.249 The
permit is issued upon proving that the applicant can manufacture goods in accordance with the
relevant standard.

Competition Act257
The Competition Act is intended to promote and safeguard competition in the economy. It is also
intended to protect consumers from unfair or misleading market conduct. One of the objects of
the Competition Act is to promote innovation.258 The CA, established under the competition
Act, receives and investigates complaints relating to consumer welfare.259It is an offence to
make a false or misleading representation that goods or services are of a particular standard or
quality.260 Trade marks safeguard quality of goods hrough assuring consumers that goods or
services originate from a given manufacturer.
It is an offence to make a false or misleading representation concerning the place of
origin of goods.261 Trade marks are indicators of origin. It is infringement if a trade mark
is used to indicate origin of goods other than that of the registered owner. Another
offence under the Competition Act is failure to comply with prescribed standards for
safety and information.2

Consumer Protection Act264

The CPA makes provisions for consumer protection and prevention of unfair trade practices. The
CPA aims to achieve a fair and efficient market, fair and ethical business practices, protection of
consumers from deceptive or misleading or fraudulent conduct and encouraging informed
consumer choice and behavior.265 Trade marks provide the consumer with information on
origin and quality of goods and services. This information facilitates market efficiency. It is an
unfair trade practice to make false, misleading or deceptive representations
Trade mark infringement is a form of unfair trade practice
Pharmacy and Poisons Act269
The PPB registers all pharmacists and drugs sold in Kenya. The register of drugs helps to
identify the individuals who are authorized to distribute them as well as their formulations.
Pharmaceutical products are marketed under trade marks. PPA enables players in this industry
enforce their trade marks with the help of PPB

Food Drugs and Chemical Substances Act

FDCSA regulates sale of drugs and food. Under the FDCSA it is an offence to label, package,
treat, process, sell or advertise any food, drug, device or chemical substance in a manner that is
false, misleading or deceptive as regards it character, value, quality, composition, merit or safety
National Flag, Emblems and Names Act285 This statute makes provisions to prevent the
improper use of the national flag, certain emblems and names.286 The Act prohibits the
registration and use of a trade mark that is similar to the national flag and emblems.287 Under
the Paris Convention, countries are required to communicate to the international Bureau a list of
state emblems, official signs and hallmarks that they desire to be protected under the Convention
The Paris convention provides for the protection of state emblems, and official hallmarks.

The EACCMA146
EACCMA came into force in January 2005.147 It is one of the EAC statutes.148 In Kenya,
EACMA is administered by the KRA.149 EACCMA was enacted pursuant to the establishment
of the EACCU in 2004.150 Two features of the EACCU are important in combating importation
of counterfeit goods to the region. These are the common safety measures for regulating the
importation of goods from third parties and the application of a common set of rules and
procedures at the ports.151 The EACCMA outlaws the importation of prohibited goods.152 All
counterfeit goods are prohibited goods.153Importation of prohibited goods is an offence that
attracts punishment by imprisonment for a maximum term of five years or a fine equivalent to
50% of the dutiable value of the goods involved.154Counterfeit goods can be seized or
forfeited.155Customs officials or police officers have power to seize goods liable for
forfeiture.156Upon seizure, the officer involved should give the owner of the suspected
goods a written notice of the seizure. The owner of the goods can apply for the release of
his goods upon furnishing sufficient security. The release of the goods is at the discretion
of the commissioner of the respective revenue authorities of the EAC members. The
commissioner may require the owner of the goods to institute recovery proceedings or
institute such proceedings suo moto.
157 Where goods have been seized and the owner is
convicted of the offence complained of, the goods are destroyed.158 EACCMA takes
precedence over the EAC partner states’ laws with respect to any matter under its
provisions.159

In the case of Jivanji Vs Sanyo Electrical Company Ltd

43
where the respondent was
registered under the Trade Marks Act (Cap 506) as the owner of the Trade Mark "Sanyo". It was
operating in Kenya through its locally registered subsidiary Sanyo-Armco (K) Ltd. Sanyo-
Armco found the appellant conducting business under the trademark "Sanyo". The goods traded
by the appellant were of inferior quality and were not manufactured by Sanyo. The respondent
filed a suit pleading the damage already suffered and continuing to be suffered as a result of
reduced sales of items. However during its holding the High Court found the defendant guilty of
counterfeiting and condemned it to pay over ten million Kenya shillings in damages. The finding
of guilt was later upheld by the Comi of Appeal. Hence it is anticipating the reoccmrence of the
offence by providing two different punishments for first time offender and second te1m
43 Civil Appeal No.225 of2001
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offenders. In this Act there is need of combining the_ two penalties in order for them to apply to
all counterfeits manufacturers equally and have a standard high fines and sentence years
compared to the ones provided now in the Act.
In conclusion therefore Kenya has a comprehensive legal framework to ensure protection of
trademarks against counterfeits products which includes the Anti-Counterfeiting Act of 2008, the
Indusllial Property Act of 2001, the Trade Marks Act cap 506, the Trade Description Act cap
505, and other treaties which are ratified by Kenya as form part of the states law under Article 2
(6)
44
• These treaties are, the Trades Related Intellectual Property's Rights, agreement, Madrid
convention on trademarks protection and The African Regional Intellectual Property
Organization which embodies the protection l!·ademarks against any form of infringement, by
supporting the registration of trademarks both locally and internationally. Hence clear
enforcement of these laws to protect our trademarks and by creating public awareness on
counterfeits products their impacts and by increasing punishments on the violators of this laws
will enable us to eliminate counterfeits once and for all so amendment is the best method of
solving this problems.
RECOMMEDA TIONS
❖ The government and private institutions should create public awareness on the impact of
counterfeits product consumption and its illegal infringement on trademarks protection in
Kenya. For example through empowering and strengthening the Kenya Anti Counterfeit
Agency both by legal empowerment and financial support to clearly spread its slogan
which is enlighten, enforce and eliminate. Since the first word which is enlighten caters
for creation of awareness to educate the Kenyans on issues relating to counterfeits effects
on trademarks protection and the consequences of using them. More so consumer's
education on counterfeits consumption negative effects will help to suppress their
demand for contraband hence reducing or totally eliminating counte1feits problems. As in
Parke Davis & Co. Ltd. v Opa Pharmacy Limited
52
, where the court found that the
appellant who was the registered proprietor of the trademark "Capsopa" used on ointment
was entitled to an injunction against the respondent's use of the mark "Capsolin" on a
similar ointment. By ruling that the marks were identical and there was a real
probability of confusion to the public. This means also if consumers are taught
different ways of identifying counterfeits they will avoid the confusion and more so
comis should continue to protect consumers against counterfeits products by offering
public awareness on the existence of the problem
❖ There is need for the creation and adoption of legal deterrent penalties with the aim of
enforcement against counterfeit products. In order to clearly effect this reconunendation
there is need to involve the Kenya police in carrying out raids and seizures in areas where
52 (1961) EA556
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counterfeits products are sold like River Road, Kariobangi, Luthuli A venue and
throughout the country, with the aim of totally eliminating counterfeiting.
❖ The government should recruit and create courts branches with people e.g. Judges and
police who are well informed on counterfeits, since its new, recent and fast growing
branch of the law, it is imperative that the Bench keeps up with the modem trends so that
the genuine trademark owners feel that the Kenyan Courts are protecting their rights as
they should. So the judiciary should organize trademark and counterfeits impact on their
protection in order for the Bench to make informed decisions which legally and
economically favours registered trademarks owners. Since the lack of Intellectual
prope1iy expertise in the national academic institution in Kenya has led to a serious
shortage of domestic legal professional and lack of policy development capacity in the
area of intellectual property. Also the Police forces should be trained to enforce the law
with regards to intangible prope1iy and not tangible prope1iy alone as intellectual
prope11y such as trademarks fall under intangible property.
❖ There is need for specific degree as to measure of how good is counterfeited or not. For
example the Kenya Anti counterfeit Act 2008, under section 2 defines counterfeiting to
mean infringing the intellectual property, patents or trademark of company or individuals
logos or marks, which makes the definition uncertain. So the definition should be
amended to do away with patent protection, since counterfeit affects only well
established trademarks so this will eliminated the uncertainty of law by protecting
specific areas of the law.
❖ There is need for mass serialization which is the changing of the way product information
is managed by giving unique identities to individual items. One implication of this higher
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level of information granularity is that_-the physical security of products can be
improved in terms of novel anti counterfeiting techniques, as well as with the
detection of• illicit trade activities.
❖ There should be interlink between Registries, when one applies for a trade mark, the
Registrar of trademarks do not consult with other registries especially the Registrar of
Companies on the availability of the Trade Mark. It is therefore possible that one might
run into problems when he realizes that he or she has registered a h·ademark yet
somebody else had registered a company h·ademark with a similar name.
❖ Trademark owners should be made aware of the actual extend of the problem of
counterfeits which remains unknown to them through problem analysis report on
counterfeit hence they will participate in anti counterfeiting activities which is indeed
important for the success of any kinds of counter measures. As trademark owners do not
want to discuss the problem in public and with their competitors hence this will be an eye
opener to them on the possible benefits from public awareness. For example the use of
Indush·y based Organizations these include agencies like Kenya Association of
Manufacturers which advocate for protection ofintellectual property rights by creating
greater awareness of their legal effects through their programs.
❖ There is need for the private and public enforcement of intellectual property rights to
work hand in hand in order to succeed in combating counterfeit problems. Since p1ivate
enforcement which is done by Individuals and private institutions in the end, they still
have to use public enforcement mechanisms e.g. the police and judiciary who are well
infonned on intellectual property rights in order to realize their 1ights.
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❖ There is need for adequate funding for Kenya's anti counterfeiting agencies and fighting
corruption both within the regulatory bodies and among individuals who fuel illicit trade ..
Since inadequate funding and corruption has led to the limitation of the number of
seizures and destruction of counterfeits goods in Kenya. Hence they are often seized and
put in warehouses where they pile up without disposal of them, so it is a risk they can be
stolen and returned to the market. There are many more reported and umeported cases of
trade in counterfeit drugs in Kenya due to inadequate training for judge's which means
that the existing and new laws are often not enforced or manipulated so that
counterfeiters may retrieve their goods after paying a small fine. That is why even after
amending the Food, Drugs and Chemical Substances Act, Cap 254 in 2002 under section
36(1) to provide stiffer penalties for seven hundred thousands shillings for trading in
counterfeit medicine large quantity of counterfeits medicines are still found existing in
the recent Kenya market. So still there is need for still surveillance on the goods sold in
Kenya markets and this can be achieved by properly funding organizations which are anti
counterfeits to carry out their functions with busted moral and achieve their objective.
❖ The east Africa community should harmonize its intellectual property laws in order to
collectively eliminate the problem of counterfeiting. More so the organization should also
look into establishments of an anti counterfeiting policy additionally, in early December
2008 Deputy P1ime Minister and the then Minister of Trade Uhuru Kenyatta53 publicly
conceded that immediate action involving a coordinated effort among East African
Community members must be undertaken to prohibit counterfeit goods from entering
Kenya and the region. He acknowledged that counterfeits are undermining the domestic
manufactming sector.
53 The fouth 'E" Engagement vis-ii-vis Trademark and copyright enforcement in Kenya
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❖ Kenya should actively participate to the global solutions on the problem of counterfeits
by supporting and facilitating the applicability and realization of completely eradicating
the problem. For example; the World Intellectual Property Organization54 plays a
proactive role in the field of international enforcement of Intellectual property, For
example its Enforcement and Special Projects Division is cooperating in the development
of effective government and industry anti counterfeiting and piracy strategies, focusing
on awareness raising, legislative assistance, improved coordination and capacity building

intellectual property which include trademarks are protected under Article 40(5) of the new
constitution of Kenya which provides that the state shall support, promote and protect the
intellectual property rights of the people of Kenya
Trademark under section 2(1)1 is a sign that individualizes goods or services offered by an
enterprise hence disguising them from those others offered by another enterprise. A trademark
must be distinctive and not deceptive. 
Trademark has historically been considered as a tool of communication used by producers to
attract consumers to original goods which are not deceptive. However in trademark treatises it is
historically thought that the
blacksmiths who made swords in the Roman Empire were the first users of trademarks. While
another trademark used for a long time include Lowenbrau, which has claimed ownership of lion
mark as their trademark since 1383.
Trademark law dates back to the age of president Ulysses S Grant in the late 18th
centnry when the Trademark Act of 1870 was enacted even though it covered many different
aspects of trademark law it failed to cover trademark counterfeiting. Hence in 1984 the
Trademark Counterfeiting Act was sought to provide trademark owners with more powerful
weapons against persons involved in trademark counterfeiting, including protection of not only
intentional copying of trademarks, but also entire products as well. 
ue to the increased competition among companies undertaking trade in more than one country
the importance of trademarks law protection, in commercial activities has been recognized as the
identification
means of the quality and value goods or services by the consumers. If trademark owners do not
hold registrations for their marks in many jmisdictions, the extent for being able to enforce their
rights tln-ough trademark infringement proceedings is therefore limited
in case of Trademarks protection registered under trademark law, it becomes an exclusive
owner's right
and can bar third paiiy from infiinging the trademark. The High Court of Kenya in Beiersd01f
AG v Emirc/1em Products Limitecl'in finding that the defendant's use of its mark "NIVELIN"
on
petroleum jelly infringed on the plaintiffs exclusive tights to its registered marks "NIVEA'' an
"NIVEA Creme" registered in class 3 and used on petroleum jelly, stated that the similarity and
resemblance in the two marks was so striking as to cause confosion to consumers. Hence in
Kenya one can exclusively be protected from tr·ademark infringement or counterfeit, ifhe is
registered under the Trademarks Act cap 506
However counterfeit products conditions are as follows; the imitation of original product with
the intent of taking advantage of the superior value of the imitated product, any packaging
bearing an identical trademark compared to the validly registered trademark without
authorization. More so for an act to be considered as counterfeit it has to be done with the
intention of defrauding the original trademark owner and making a lot of profits due to
production of fake products which cause confusion to consumers.

in the case of AMF, Inc v Sleeker aft Boats9 , The Court stated eight specific elements to
measure likelihood of confusion which are; strength of the mark, proximity of the goods,
similarity of the marks, evidence of
actual confusion, marketing channels used, type of goods and the degree of care likely to be
exercised by the purchaser, defendant's intent in selecting the mark and the likelihood of
expansion of the product lines.
As demonstrated in the case of Stripes Limited v Hair Zone bzc12where the Registrar of Trade
Marks addressed the controversial issue of protection ofwell lmown marks in Kenya as follows;
The degree of
knowledge or recognition of the mark in the relevant sector of the public; The duration, extent
and geographical area of any use of the mark; The duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies; The duration and
geographical area of any registrations, and/or any applications for registration, of the mark, to the
extent that they reflect use or recognition of the mark; The record of successful enforcement of
rights in the mark, in particular, the extent to which the mark was recognized as well known by
competent. However if the register has en-ed in his judgment an appeal is allowed in higher
comtfor the aggrieved party; as Glaxo Group Limited Vs Syner-med Pharmaceuticals
Limited13 where the High court in its judgment reversed the Registrar's decision by stating that
the con-ect
position of the law is that in cases such as the present one, the words that are the subject of the
dispute relating to a trade name should be considered as a whole and not in the manner that the
Registrar did. If the Registrar had considered the words as a whole he would undoubtedly have
an-ived at a different decision. Having considered the applicable law, it is clear that the words
'SYNERCEF' and 'ZINACEF' are phonetically similar in pronunciation and that it is likely to
cause confusion and deception in the market.'
In Kenya, registrations are valid for seven years from application date in line with Article 18 of
the Trade related Aspects oflntellectual Property Rights which provides for seven years
minimum requirement for Trademarks protection and renewable for fourteen year periods. The
first person to apply for a mark as its user or intended user is entitled to its registration.
Applications are published for opposition for 60 days

Kenya has to realize the importance ofregistering creation as trademarks in the country.
As per Ruth Taplin and Alojzy Nowak24 two of Kenya products which are Kiondo and Kikoi
have been at the centre of dispute regarding intellectual property ownership. First Kenya lost its
intellectual property ownership ofKiondo to Japan as the name was registered there as a
Trademark. As a result Kenyan Kiondo makers have to pay levies to Japan for using the name.
Secondly Kenya was about to loose the ownership ofKikoi to a United Kingdom based firm
which had applied to register K.ikoy as a trademark for its clothing lines. However the United
Kingdom intellectual property office could not register the trademark, as historical Kikoi is a
htmdred percent hand lmitted cotton fabric from Kenya worn by men and women along the East
Africa. So the above two incidents shows the major needs for creation of awareness of
registering trademark laws and their protection from being counterfeit from any patt of the world
by putting a clear adve1t on the trademarks belonging to Kenya to avoid them being registered
unaware by other countries and be forced to pay levies to them like it has happen with Japana
who registered Kiondo as their trademark, even though it was historical Kenyan product.
a random East Africa Community policy found almost thirty percent of drugs in the market are
counterfeited Figures.28 Some of the fake drugs discovered are no more than just chalks or
water being marketed as competent phannaceutical products.
In 2008, Kenya's Anti Counterfeit Act established the Anti Counterfeit Agency, to lead
and coordinate the Kenyan government efforts to combat counterfeit goods in Kenya. however
little has been done in addressing the fight against counterfeiting in Kenya because of the
following factors; low drive by governments in fighting counterfeits, corruption particularly at
customs entry points, weak institutional capacity and capabilities of legal enforcements,
ignorance of consumers, lack of public awareness of policy and strategy on counterfeits, and
weak legislation and enforcement machinery. Hence industry should unite in the fight against
counterfeiting by developing collaboration and mutual assistance models; on the basis of
stakeholder agreements, technical expertise and information enabling the Anti Counterfeit
Agency and its stakeholders to intervene. Thus, tl1is public and private partnership is the key to
success, as tl1e Anti counterfeit agency is powerless in fighting counterfeits as long as
manufacturers do not support them with most evidence, that an item is counterfeit. More so the
fight against counterfeits would also require strengthening the judiciary. A weak judicial system
is making local Kenyan industries to shy away from pursuing judicial remedies where their
products are counterfeited due to fear ofliability where such cases fail. They fear that in case the
judge is compromised, they are liable and have to pay for damages cansed by counterfeit
products.

Counterfeit
It is
32
to illegally imitate something with the intent to take advantage of the superior value of the
imitated product. In Kenya counterfeit acts are clearly identified under section 2 of the Anti
counterfeit Act 2008 to mean actions without the authority of the owner of any intellectual
property right subsisting in Kenya or elsewhere in respect of protected goods which are:-
First, the manufacture, production, packaging, re-packaging, labelling or making, whether
in Kenya or elsewhere, of any goods whereby those protected goods are imitated in such
manner and to such a degree that those other goods are identical or substantially similar
copies of the protected goods.
Secondly, the manufacture, production or making, whether in Kenya or elsewhere, the
subject matter of that intellectual property, or a colourable imitation thereof so that the
other goods are calculated to be confused with or to be taken as being the protected
goods of the said owner or any goods manufactured, produced or made under his license.
Thirdly, the manufacturing, producing or making of copies, m Kenya or _elsewhere, m
violation of an author's rights or related rights.
Hence section 2 of the Anti counterfeits Act is in line with Article 51 of the Trade Related
Intellectual Property Rights which is to the same effect in its definition of trademarks
counterfeits. So products that are packaged in a way to misrepresent the manufacturer are clearly
counterfeits. As stated in the Proctor & Gamble Vs So11al Holdings (K) Ltd
33  in this case the
Registrar held that Sona! Holdings (K) Limited had knowingly crafted its trademark in a way
that rendered it confusingly similar to Proctor and gambles mark for nse on pampers with a view
to deceive the public into believing that the goods sold by it are those of Proctor and gamble. The
court upheld Proctor and Gamble's prior extensive use in Kenya of its mark and de-registered the
offending mark Samper with immediate effect.
he tlu·eat of counterfeits is realized in Kenya as locally manufactured products are being priced
out of the market by fake products. Hence it has undermined the national attempts to regulate
commerce in the common interest, more so the problem of counterfeiting has increased in Kenya
due to the three major factors outlined in the independent variable as; lack of public awareness,
laxity on the part of law, poor vigilance and prosecution
Lack of public awareness
Kenya is reported to have serious problem in counterfeiting trademarks, even though Kenyans
are enterprising and hard working people; the abusers are not aware they are conunitting an
offence. They believe that they are earning an honest living and they see nothing wrong in
infringing a registered mark. The high rate of infringement may also be because of competition
that exists among businesses in Kenya. The rivalry is fairly high and it is quite easy for
businesses to duplicate a registered trademark, which is illegal without seeking the holders
consent but unfortunately, many people are unaware of this fact
Laxity on the part of law
The sloppiness of the law in terms of fighting counterfeits or eradicating them in Kenya can be
seen due to the following factors;
First of all counterfeiters normally seek to trade in countries where they suffer the least even
when they are arrested. That is why the lack of comprehensive law punishments to deal with this
problem has made Kenya an attractive market for counterfeiters because the existing trademarks
protection laws are not punitive enough. This has led to products in high demand like batteries
pharmaceutical dmgs and textile products in Kenya to be manufactured based on the same or
similar designs, often packaged and branded in ways to make them indistinguishable from the
original
Secondly, there are fewer risks involved in counterfeit products trading since they are rarely
caught and if they are caught the punishments are very modest and are treated as minor crimes.
Hence lenient penalties are awarded since cases involving counterfeit trades are mostly handled
by magistrate comis. More so statutes provide unsatisfactory legal penalty which have no
deterrent effects. For example; the Food, Drugs and Chemical Substances Act, Cap 254,
amended in 2002 under section 36(1) provides a penalty of seven hundred Kenya shillings for
trading in counterfeit medicine and also the Trade Description Act cap 505, section 15
provides a penalty for counterfeits offences to a fine not exceeding two million shillings or to
imprisonment for, a te1m not exceeding five years, or to both such fine and imp1isonment which
is little compared to the economic losses caused by counterfeit products which is calculated in
tenns of billions in Kenyan economy.

There a need for strict Intellectual Property rights enforcement through police and customs
authmities in East
Africa Commurtity, as she argued in a meeting with the East African Community Senior
members in April 2007. More so Chalker saw the move by the Kenya Constitutional Court to
suspend some sections of Kenya's Anti Counterfeit Act applicable to generic medicines, as a
weakness to anti counterfeiting efforts. Hence she encouraged the drafters of anti counterfeiting
legislation to do more consultation and deeper research when drafting laws. So in order to deal
with the issue of the laxity oflaw in terminating counterfeit problem a more comprehensive and
deterrent legislation need to be enacted and put in place to save the society
Poor vigilance and prosecution
Poor vigilance and prosecution which means lack of attention and proper trial in Kenya against
counterfeit products can be proved by the fact that they are often smuggled or manufactured in
the country without being nabbed and on very rare occasion are caught. More so this lack of
vigilance on counterfeit products can be cultivated by c01Tuption cycles in the government
which
bribery the enforcement officers who are poorly paid to conduct searches, arrest and seize the
counterfeits goods to tum a blind eye on the business
he lack of recruitment and creation of courts branches with people e.g. Judges and police who
are well informed on anti counterfeits laws, since its new, recent and fast growing branch of the
law has led to poor prosecution. This is because the Bench has not done enough to keep up with
the modem trends of protecting genuine trademark owners against counterfeits. More so due to
inadequate h·aining for judges on intellectual property laws, it has led to trademarks protection
law being often not enforced or manipulated so that counterfeiters may retrieve their goods after
paying a small fine. Hence there are unreported cases of trade in counterfeit products in Kenya
due to lack of trust on the expertise of the Judiciary on trademarks protection issues.
Intellectual Property disputes have for years generally not been prioritized by the superior courts.
This is apparent even from the administrative divisions of the judiciary where Intellectual
Property is lumped together with general commercial law disputes.
the Police forces are trained to enforce the law with regards to tangible property and not
intangible property which falls under intellectual prope1iy such as trademarks hence this has lead
to increase of counterfeit product due to poor prosecution and vigilance.
nadequate funding for Kenya's anti counterfeiting agencies, has led to the limitation of the
number of seizures and destmction of counterfeits goods in Kenya hence they are often seized
and put in warehouses where they pile up without disposal of them. It is a risky situation since
some are even stolen and retmned to the market

According to Rabie JA (Capital Estate (above) at 929C-E): ‘The wrong known as passing off
consists in a representation by one person that his business (or merchandise, as the case may be)
is that of another, or that it is associated with that of another, and, in order to determine whether
a representation amounts to a passingoff, one enquires whether there is a reasonable likelihood
that members of the public may be confused into believing that the business of the one is, or is
connected with, that of another.’
The origins of passing off began in the nineteenth century.  Perry v Truefitt, 49 ER 749 stated
that ‘A man is not to sell his own goods under pretence that they are the goods of another man.’ 
The classic action of passing off is based on the trinity of (i) goodwill, (ii) misrepresentation to
the public, and (iii) damage to the claimant, as was reaffirmed in the 'Jif Lemon' case (Reckitt &
Colman Ltd v Borden Inc [1990] UKHL 12). 
in Payen Components SA Ltd v Bovic CC & others [1995] ZASCA 57; 1995 (4) SA 441 (A) at
453G-H: ‘In my opinion a Court should be wary of allowing the sharp outlines of these two
established branches of the law of unlawful competition [copyright and passing-off], evolved
through long experience, to be fudged by allowing a vague penumbra around the outline.
Unlawful competition should not be added as a ragbag and often forlorn final alternative to every
trade mark, copyright, design or passing off action. In most such cases it is one of the established
categories or nothing.’
summary of the principles that are involved in a passing off enquiry:

1. Passing off involves three elements, namely,

 goodwill or reputation attached to goods or services by association with the identifying

get-up;
 a misrepresentation, whether or not it is intended to deceive ;
 a likelihood of damage as a result of the erroneous belief that the defendant’s goods come
from the same source as the plaintiff’s.   This is, of course, the classic trinity, a well-
known trade mark or get-up, a  confusingly similar trade mark or get-up, and likely
consumer confusion.

unfair trade practices may harm innovators, legitimate traders, consumers and the government

In East African Breweries Limited (EABL) v. Castle Brewing (Kenya) Ltd (CBKL) 111 it was
evident that protection against unfair competition effectively supplements the protection of
industrial property rights, such as patents and registered trade marks, and that there are no cases
where an invention or a sign is not protected by such a right.112 The plaintiff’s specific claim
related to a brewing process which did not require malting and the resulting unmalted barley
beer. This would make beer cheaper to process and sell because unmalted beer attracts less duty
in Kenya. A major argument was that it would be unfair competition to allow CBKL to exploit
EABL’s trade secrets. The unauthorized use of a trade mark that has not been registered is
considered illegal on the basis of general principles that belong to the field of protection against
unfair competition. Such unauthorised use is usually called “passing off.” This principle was
applied to secure protection for an unregistered trade mark in the case of Saudi Arabian
Corporation v. Saudi Kenya Enterprises Ltd.113 Similarly, if an invention is not disclosed to the
public and is considered to constitute a trade secret the unauthorised performance by third parties
of certain acts in relation to that trade secret may be illegal

Question 2

With the aid of constitutional, statutory, case law, anecdotes and academic authorities discuss the
meaning and significance of any one or more of the following in Kenya and Africa or from an
Afro Kenyanist perspective: moral rights, economic rights, generic typology of rights in
copyright (which cut across most intellectual property doctrines).
(30 marks)
Answer ANY 2 questions

Question 3

“That which we call a rose by any other name would smell just as sweet.” William Shakespeare
in Romeo and Juliet…

Discuss with reference to the objectives, purpose or functions of trade mark in Kenya and Africa.
(20 marks)

Question 4

“Copyrightability in Kenya and Africa is not limited to the subject matter under the Copyright
Act 2001 (Revised 2020) and focuses on the originality of the expression, not the idea, not the
quality or aesthetics.” Discuss. (20 marks)

Question 5

Discuss at least one component of the following with specific reference to Kenya and Africa: (a)
The doctrine of inventive step is expressed in terms of “non obvious to a Person Having
Ordinary Skill in the Art (PHOSITA), the equivalent of the reasonable person.” Who is
PHOSITA? (b) Compare and contrast patent and utility model. (20
marks)

Question 6

Discuss the following excerpt:

 “Scholarship indicates that intellectual (IP), innovation and technology transfer present
challenges and opportunities in the management of the novel coronavirus (COVID-19),
malaria, HIVAIDS, tuberculosis (TB) and pneumonia, among others.”

Ben Sihanya (2020) “Intellectual property, innovation and technology transfer in health in Kenya
and Africa: The case of COVID-19 and malaria,” Chapter 31, in IP and Innovation Law in
Kenya and Africa (IPILKA) Vol 2, at WWW.innovativelawyering.com. (20 marks)

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