The Anti-Counterfeit (Recordation) Regulations

Legal Notice 118 of 2021

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Legal Notice 118 of 2021
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Anti-Counterfeit Act
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LAWS OF KENYA

ANTI-COUNTERFEIT ACT

THE ANTI-COUNTERFEIT (RECORDATION) REGULATIONS

LEGAL NOTICE 118 OF 2021

  • Published in Kenya Gazette Vol. CXXIII—No. 166 on 13 August 2021
  • Commenced on 13 August 2021
  1. [Revised by 24th Annual Supplement (Legal Notice 221 of 2023) on 31 December 2022]

1. Citation

These regulations may be cited as the Anti-Counterfeit (Recordation) Regulations.

2. Interpretation

In these Regulations, unless the context otherwise requires—"Act" means the Anti-Counterfeit Act (Cap. 510);"agent" means a person duly appointed to act on behalf of an intellectual property right owner, and includes a licensee;"application" means an application made to the Executive Director under the Act;"certificate of registration" means a certificate relating to protection of intellectual property rights issued under any written law;"copies" means copies of any document issued under the Act or these Regulations;"Executive Director" means the Executive Director of the Authority appointed under section 10 of the Act;"raw materials" means items used as ingredients in the manufacture of goods; and"registrant" means the owner of an intellectual property right who has recorded the same with the Authority and includes its authorized agent or licensee or assignee.

3. Application for recordation

(1)Pursuant to section 34B(3) of the Act, an application to record an intellectual property right relating to goods to be imported into Kenya shall be made by the owner of the intellectual property in the Form ACA1B set out in the First Schedule and accompanied by the fee specified in the Second Schedule to these Regulations.
(2)Within thirty days of receipt of the application under paragraph (1), the Authority shall, in writing and pursuant to section 34B(2) of the Act, notify the applicant of the approval or denial of the application.
(3)Notwithstanding the provisions of these Regulations, it shall be the responsibility of any person seeking to import goods for commercial purposes to ensure that the intellectual property right relating to the good recorded.

4. Submission of particulars of imported goods

A person, other than a registrant, seeking to import any goods shall, in addition to any other requirements under any written law, notify the Authority of such intention in the Form ACA 2B set out in the First Schedule and accompanied by the fee specified in the Second Schedule.

5. Change of ownership

(1)Pursuant to section 34B(8) of the Act, where there is a change in ownership of a recorded intellectual property right and the new owner seeks to continue with the recordation, the new owner shall immediately make an application to continue with the recordation in the Form ACA 3B set out in the First Schedule and accompanied by the fee specified in the Second Schedule.
(2)Where the new owner of a recorded intellectual property right seeks to discontinue the recordation, the new owner shall notify the Authority within a period of thirty days of the date of the change in ownership in the Form ACA 4B set out in the First Schedule.

6. Change of name

Where there is a change in name of the registrant of a recorded intellectual property right and such registrant wishes to continue with the recordation he shall immediately notify to the Authority of the change of name in Form ACA 5B set out in the First Schedule and accompanied by the fee specified in the Second Schedule.

7. Renewal of recordation

Pursuant to section 34B(11) of the Act, an application for renewal of a recordation shall be made to the Authority—
(a)in the Form ACA 6B set out in the First Schedule;
(b)accompanied by the fee specified in the Second Schedule; and not later than thirty days to the expiration of the current recordation.

8. Cancellation or revocation of recordation

Where a recordation of an intellectual property right is cancelled or revoked, the Authority shall notify the registrant within a period of thirty days from the date of such cancellation or revocation.

9. Register

The Authority shall maintain a register of all recorded intellectual property rights.

10. Search

Any person seeking to establish the particulars of any recorded intellectual property right shall make an application for an official search in the Form ACA 7B set out in the First Schedule and accompanied by the fee specified in the Second Schedule.

11. Copies of documents

Any person seeking copies of any document submitted under these Regulations shall apply to the Authority in the Form ACA 8B set out in the First Schedule and accompanied by the fee specified in the Second Schedule.

12. Appointment of agents

(1)The owner of an intellectual property right may appoint an agent to act on his behalf in the recordation of an intellectual property rights or any procedure related thereto.
(2)An intellectual property rights owner who ordinarily resides outside Kenya or has a principal place of business outside Kenya may be represented by an agent in recordation of an intellectual property rights.
(3)The appointment of an agent in the recordation of an intellectual property shall be conducted in accordance with the provisions relation to appointment of an agent under the Anti-Counterfeit Regulations (sub. leg).

13. False declaration

A person who—
(a)with intent to deceive or mislead, gives any false information in relation to any application made to the Authority;
(b)removes, adds to, alters, defaces, or renders illegible any information on any form provided under these Regulations in relation to any goods or tools; or
(c)without authority or reasonable cause alters any entry made under these Regulations,
commits an offence and shall be liable, on conviction, to a fine not exceeding six thousand shillings or to imprisonment for a term not exceeding six months, or both.

14. Forms

(1)The forms specified in the First Schedule to these Regulations shall, with such modifications, be used for the purpose indicated therein.
(2)Notwithstanding the provision of these Regulations, a document which deviates from the specified form shall not be void by reason of the deviation which does not affect the substance of the document, unless it is calculated to mislead or deceive in which case regulation 13 shall apply.

FIRST SCHEDULE

FORMS

FORM ACA 1B(r. 3(1))
THE ANTI-COUNTERFEIT ACT (Cap. 510)
 
The Anti-Counterfeit Authority
 
APPLICATION TO RECORD INTELLECTUAL PROPERTY RIGHTS
 
The Executive Director,
The Anti-Counterfeit Authority
 
1.Name of the owner of the intellectual property right 
2.Telephone number, postal and physical address of owner 
3.Details of the intellectual property rights owner or partners of the association 
4.Name of agent or local distributor if any 
5.Telephone number, postal and physical address of agent or localdistributor 
6.Sample or photographic representation of the protected goods 
7.Name and address of each foreign person or business entityauthorized or licensed to use the intellectual property right 
8.The identity of any parent or subsidiary company or other foreigncompany under common ownership or control which uses the intellectual property right abroad 
9.Place of manufacture of goods bearing the recorded trade mark 
10.Remarks 
 
Dated this .......................... day of ................ 20 ......
 
Name of Applicant ................... Signature ......................
 
For official use only
 
THIS APPLICATION IS APPROVED/NOT APPROVED
 
.......................................................................
EXECUTIVE DIRECTOR
 
NOTES:
 3. If space provided is not sufficient, please use a separate sheet of paper;
  
 4. This application shall be accompanied by a copy of the certificate of registration certified by the registering authority showing title to be presently in the name of the Applicant;
  
 5. The application shall also be accompanied by a fee set out in the Second Schedule to the Act.
 

_________________________________

FORM ACA 2B(r. 4)
THE ANTI-COUNTERFEIT ACT (Cap. 510)
The Anti-Counterfeit Authority
INTELLECTUAL PROPERTY RIGHT PARTICULARS FOR IMPORTED GOODS
The Executive Director,
The Anti-Counterfeit Authority,
 
1. Name and address of exporter/consignor2. Name and address of importer/consignee3. Name and address of agent
4. Shipment mode (sea, air, etc.)5. Country of Origin6. Port of Destination
 DeclaredHS CodeProductDescriptionQuantity Unit ofMeasureBrandNameName And Address of Owner of Intellectual Property RightACA Recordation Reference NumberRemarks
1.        
2.        
3.        
4.        
5.        
6.        
7.        
8.        
9.        
10.        
Dated this .......................... day of ................. 20......
 
Name .............................. Signature ..........................
 
NOTES:
 1. If space provided is not sufficient, please use a separate sheet of paper.
  
 2. This Form shall be accompanied by certified copies of certificates of registration of the intellectual property rights or information which furnishes authorship or creation.
 

_________________________________

  
  
  
FORM ACA 3B(r. 5(1))
THE ANTI-COUNTERFEIT ACT (Cap. 510)
The Anti-Counterfeit Authority
APPLICATION TO CONTINUE RECORDATION ON CHANGE OF OWNERSHIP
The Executive Director,
The Anti-Counterfeit Authority,
1.Name of the new owner of the intellectual property right. 
2.Telephone number, postal and physical address of the new owner ofthe intellectual property right. 
3.Name, telephone number, postal and physical address of theprevious owner of the intellectual property right. 
4.Effective date of the change of ownership. 
5.Description of the time limit, if any, of the rights transferred. 
6.Remarks 
Dated this ...................... day of ............. 20 ...........
Name of Applicant........................... Signature ...............
 
For official use only:
 
THIS APPLICATION IS APPROVED/NOT APPROVED
...............................................................EXECUTIVE DIRECTOR
Notes:
1.If space provided is not sufficient, please use a separate sheet of paper.
2.This Form shall be completed and filed with the Authority in quadruplicate.
3.This application shall be accompanied by a certified copy of the certificate of registration and the prescribed fees.

_________________________________

FORM ACA 4B(r. 5(2))
THE ANTI-COUNTERFEIT ACT (Cap. 510)
The Anti-Counterfeit Authority
NOTICE OF DISCONTINUATION OF RECORDATION
The Executive Director,
The Anti-Counterfeit Authority,
NAIROBI
This is to notify you that .......................................... (indicate name of the proprietor of the recorded intellectual property right) holder of recordation number has with effect from the date of this notice discontinued the said recordation.
 
Dated at Nairobi this .................... day of ............ 20 ............
 
Name of Proprietor of the Intellectual Property Right)
 
Note:
The form shall be signed by an authorized officer or agent or representative of the registrant.
_______________________________________
FORM ACA 5B(r. 6)
THE ANTI-COUNTERFEIT ACT (Cap. 510)
The Anti-Counterfeit Authority
NOTICE OF CHANGE OF NAME
The Executive Director,
The Anti-Counterfeit Authority,
NAIROBI
This is to notify you that ........................ (indicate name of the proprietor of the recorded intellectual property rights holder) has with effect from ............ (indicate the date, month and year) changed its name to ..................... (indicate the new name).
Dated at Nairobi this ............... day of ............ 20 ................
.................................................................(Name of Proprietor of the Intellectual Property Right)
Note:
 1. This form shall be accompanied by a certified copy of the certificate of registration showing title in the new name and the prescribed fees.
 2. The form shall be signed by an authorized officer or agent or representative of the proprietor.

_________________________________

FORM ACA 6B(r. 7)
THE ANTI-COUNTERFEIT ACT (Cap. 510)
The Anti-Counterfeit Authority
APPLICATION FOR RENEWAL OF RECORDATION OF INTELLECTUAL PROPERTY RIGHT
The Executive Director,
The Anti-Counterfeit Authority,
1.Current recordation reference number 
2.Name of the owner of the intellectual property 
3.Telephone number, postal and physical address of owner 
4.Name of agent or local distributor if any 
5.Telephone number, postal and physical address of agent 
6.Description of the recorded intellectual property right 
7.Validity and subsistence of the trademark intellectualproperty 
8.Remarks 
Dated this .......................... day of .............. 20 ......
Name ............................. Signature .......................
 
NOTES:
1.If space provided is not sufficient, please use a separate sheet of paper;
2.This Form shall be accompanied by;
 (a) a status copy of the certificate of registration certified by the registering authority showing the title to be in the name of the Applicant;
 (b) a statement describing any change of ownership or in the name of the owner and any change of addresses of the owners and places of manufacture;
 (c) a fee as prescribed in the Second Schedule to the Act.

_________________________________

  
FORM ACA 7B(r. 10)
ANTI-COUNTERFEIT ACT (Cap. 510)
 
Anti-Counterfeit Authority
 
APPLICATION FOR OFFICIAL SEARCH
 
Executive Director
Anti-Counterfeit Authority
NAIROBI
 
Kindly supply the undersigned with details of the following recorded intellectual property right:
Nature of Intellectual Property Right 
Name of proprietor 
Nationality of Proprietor 
Postal Address of Proprietor 
Physical Address of the Proprietor 
Local Agent of Proprietor, if any 
Date of Recordation 
...................................................................
APPLICANT

_________________________________

FORM ACA 8B(r. 11)
THE ANTI-COUNTERFEIT ACT (Cap. 510)
 
The Anti-Counterfeit Authority
 
APPLICATION FOR COPIES OF DOCUMENTS
 
The Executive Director,
The Anti-Counterfeit Authority,
 
1.Name of the applicant 
2.Telephone number, postal and physical address of the applicant 
3.Record Number 
4.Reason(s) for seeking copies 
5.Remarks 
Dated this ..................... day of ............ 20 ........
Signature ...........................................................................
 
OWNER/AGENT
 

SECOND SCHEDULE

FEES

  
FEES(r. 3, r. 4, r. 5, r. 6, r. 7, r. 10, r.11)
 
No.FormsPurposeAmount(United States Dollars)
1.FORM ACA 1BApplication to Record intellectualproperty rights90 for the first class, 10 for each subsequent class
2.FORM ACA 2BSubmission of Particulars ofImported Goods20
3.FORM ACA 3BChange of ownership20
4.FORM ACA 4BChange of Name20
5.FORM ACA 5BRenewal of Recordation50
6.FORM ACA 6BApplication for Search5
7.FORM ACA 7BApplication for copies0.5 per page
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31 December 2022 this version
13 August 2021
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