i.General structure, composition and jurisdiction of IPR Courts in Kenya

The Court system in Kenya is created by the Constitution.[7] Having promulgated a new Constitution on 27^thAugust 2010, the Court system has generally been enhanced and hence a wider jurisdictional sphere for the protection of IPR’s in the country.

The Court system is basically structured into two main tiers i.e. Superior Courts and subordinate Courts. Superior Courts consist of the Supreme Court, the Court of Appeal and the High Court. Subordinate Courts on the other hand comprise of Magistrates Courts, Kadhi’s Courts, Courts Martial, and any other Court or local tribunal as may be established by an Act of Parliament.

Superior Courts of record mainly possess appellate jurisdiction from decisions of lower Courts including in Intellectual Property disputes. However, the Constitution makes certain exceptions for cases and situations when a superior Court may exercise original jurisdiction and make decisions as the first port of call even in intellectual property disputes. Unless otherwise provided for by law, every other Intellectual Property or other dispute arising within the jurisdiction of a subordinate Court or tribunal must first be decided by that specialized Court or tribunal

Tribunals on the other hand are established under various laws made by Parliament to deal with disputes that arise in the course of the regulation and administration of specific matters and this is where Intellectual Property matters and disputes are generally categorized.

ii. Specialized IPR Courts and tribunals in Kenya

Specialized Intellectual Property Tribunals are established under specific laws made by Parliament to deal with disputes that arise in the course of the regulation and administration of specific Intellectual Property law matters. There are 5 main specialized Intellectual Property Tribunals in Kenya and they include:

a)      The Managing Director who deals with a wide range of disputes including oppositions against registration of Industrial Designs, Utility models and Technovations

b)      The Industrial Property Tribunal which deals with a wide range of disputes involving Patents, Industrial Designs, Utility models and Technovations

c)      The Registrar of Trademarks who mainly deals with disputes involving Trade Marks, geographical indications, certification marks, collective marks and licenses for Trademarks

d)     The Seeds and Plant Varieties Tribunal which deals with disputes involving Plant Breeders Rights and

e)      The Competent Authority deals which with disputes involving Copyright and collective management societies.

The composition and jurisdictional scope of these tribunals are determined by the respective Acts of Parliament that establish them.

iii. General effect of the decisions of specialized IPR Courts and Tribunals in Kenya

Except for the Competent Authority and the Seeds and Plant varieties Tribunals which are yet to effectively take off in terms of full operations, the above specialized tribunals have since their establishment handled numerous disputes in their respective areas of jurisdiction and rendered equally numerous landmark and trendsetting decisions which have radically transformed the legal and commercial landscape in Kenya in so far as Intellectual Property rights in Kenya are concerned.

That Intellectual Property is a function of commerce and trade cannot be over-emphasized. Intellectual Property contributes millions of Kenya Shillings to the local economy in form of employment, government revenue, and consumer spending on branded and new commodities that are the result of Intellectual Property. This aspect of commerce is most certainly directly or indirectly attributable to the favourable legal environment within which rights holders operate including the existing enforcement mechanisms provided by specialized tribunals. Indeed some of the benefits arising from IP can be credited to the decisions of these tribunals and can be summarized as below.

- Improved certainty of the legal implications and consequences of certain offending acts or omissions in relation to Intellectual Property rights.

- Increased foreign direct investment in Intellectual Property intensive industries in Kenya buoyed by the confidence of certainty and consistency of Intellectual Property principles and laws and compliance with international treaties and agreements to which Kenya is a party.

- Efficiency of time and resource in litigation which has greatly improved the cost of doing business in Kenya and hence improved investor confidence and assurance of returns for innovation.

- Access to certain essential products, of public interest, that would otherwise be unavailable without compulsory licensing

iv. Effect of the decisions of specialized IPR Courts and Tribunals on the level of IP expertise in the judiciary in Kenya

The membership and composition of specialized IPR Courts and Tribunals in Kenya is mainly drawn from persons who have impeccable academic and practical credentials in the country. For example the past[8] and current[9]Managing Directors of KIPI, Registrar of Trademarks, chairpersons of the IPT and SPV tribunal[10] and members of the Competent Authority[11] are persons who have exhibited a proven track record in Intellectual Property practice and/or are distinguished academics in the same. For that reason, their decisions, on pure principles and points of law, are rarely interfered with by Appellate Courts of superior record.

That notwithstanding, most judges of the superior Courts have very little or no training in Intellectual Property law and may not be able to appreciate certain core issues that affect IPR’s. Intellectual Property disputes have for years generally not been prioritised 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.

In essence therefore, decisions of specialized IPR tribunals in Kenya are only persuasive and mainly serve to guide judges of superior courts in their considerations of disputes [12]but cannot equip them with the required level of expertise to effectively deal with IP disputes before them. For instance, it has been the case in Kenya that members of superior Courts shy away from rendering judgements in disputes involving technical IP matters. According to Professor Otieno Odek, the former Managing Director of KIPI, issues on IP litigation at the High Court and Court of Appeal have not yielded definitive jurisprudence on Kenyan IP law, but rather have seen Courts refer IP litigants, particularly on Patent and Industrial Design infringement disputes to the Industrial Property Tribunal. There seems to be reluctance on the part of the High Court to deal with Patent issues.[13]

However, in other instances the principle of stare decisis coupled with Section 3 (1) (c) of the Kenya Judicature Act Cap 8 laws of Kenya which applies the substance of the common law, the doctrines of equity and the statutes of general application in force in England on the 12^th August,1897, and the procedure and practice observed in Courts of justice in England at that date subject to and so far as written laws do not extend or apply; have meant that Kenya’s Superior Courts still rely heavily on the decisions of specialized IPR Courts in England on similar factual situations occurring in Kenya. Reliance on those cases is further reinforced by the provisions of some of the statutes in Kenya, especially the 1938 Trade Marks Act, which were transplanted verbatim from England hence making commentaries, cases and decisions made on the provisions of those statutes highly persuasive in Kenya. In that regard, Reports on Patent cases (R.P.C) and Fleet Street reports (FSR) are very highly regarded in the country’s judiciary and have in a special way helped develop Kenya’s jurisprudence on Intellectual Property Law.

Similarly, very few law firms in Kenya have fully fledged departments that offer exclusive services on Intellectual Property law. As a result, the number of expert legal practitioners is very low. However, the few advocates who practice in this area have immensely contributed to the development of jurisprudence in the decisions of the Tribunals and have equally benefited from the expertise of their counterparts at the tribunals.

v. Effect of Specialized IPR Courts and tribunals on the conduct of commerce in IP dependent sectors in Kenya

Generally, specialized IP Courts have greatly improved the enforcement of IPR’s in Kenya through a quicker and more effective decision-making process. In view of the specialized expertise of members of these Tribunals vis-à-vis the low expertise of the mainstream Courts, the time spent on litigation has greatly reduced, which in turn has encouraged vigilance by rights holders in protecting their rights. More and more companies and indeed individuals are as a result able to invest in enhancing the value of their IPRs because of the certain and expert legal environment, the reduced costs of litigation and hence higher revenues e.t.c.

Specialized IPR Courts have also ensured continuity in innovation in the IP sector which has translated to improved quality of goods and therefore higher standards of living. In economic terms, an improvement in the standard of living of a populace directly impacts on the spending power of that populace hence a robust commercial environment for more investment.

Moreover, as a result of the foregoing achievements, Companies with high net worth of IPR’s have successfully influenced the credit sector of financial institutions which have now shown willingness to hold certificates of grant of Patents, Trademarks, Industrial Designs etc as collateral security for loan facilities through debentures and floating charges. This has greatly shifted over-reliance on traditional securities for financing.

Finally, specialized IPR Courts and tribunals have greatly ensured public/consumer protection by rendering decisions that prevent protection for similar marks or Industrial Designs or the protection of Patents in methods of treatment. These are mainly public policy issues that the Tribunals have sought to protect especially in cases where human health is concerned.

vi. The strengths and weaknesses of Kenya’s general and specialized IPR Court system

The effectiveness of the specialized tribunals has not been without blemish. Whilst they offer the common advantages and efficiencies of specialization and technical expertise free from the rigours of mainstream Courts of law, they have also experienced challenges and weaknesses in their operations that have hindered realisation of expectations of players in the Intellectual Property arena. Most of these challenges are common to all the specialized IP Tribunals and they include the following;

a)      Methods and procedures of appointment and removal of tribunal members

b)      Organization and qualifications of tribunal members

c)      Terms and period of service of tribunal members

d)     Resource allocation to the tribunals

e)      Law reporting system of the tribunals

f)       Public ignorance.

1.1.0 Superior Courts

Under the Constitution of Kenya the superior Courts are[14];

The Supreme Court

The Court of Appeal and

The High Court

and Such Courts as may be established by parliament to hear cases related to employment and labour relations and the environment and the use and occupation of, and title to, land.

1.1.1 The Supreme Court

The Supreme Court is established by Article 163 of the Constitution of Kenya. It is made up of 7 Judges including the Chief Justice and the Deputy Chief Justice. It has exclusive original jurisdiction to hear and determine disputes relating to the elections to the office of President. It also has appellate jurisdiction to hear and determine appeals from the Court of Appeal and from any other Court or tribunal as prescribed by an Act of Parliament.

The Supreme Court may also give an advisory opinion at the request of the National government, any State organ, or county government regarding any matter touching on a county government.

All decisions of the Supreme Court are binding on all the other Courts except the Supreme Court itself.

1.1.2 The Court of Appeal

The Court of Appeal is created by Article 164 of the Constitution. It is comprised of the President of the Court, elected by the Judges of the Court of Appeal, and not less than 12 Judges including the President.

It only has appellate Jurisdiction to hear appeals from the High Court; and from any other Court or tribunal as may be prescribed by an Act of Parliament. The principal seat of the Court of Appeal is in Nairobi but it periodically holds its sessions in the towns of Mombasa, Kisumu, Nakuru, Nyeri and Eldoret. This therefore ensures access to justice across a wide geographical sphere.

 In its appellate jurisdiction, the Court of Appeal has rendered several landmark decisions touching on a number of significant questions on Intellectual Property law, the most significant one being a patent infringement case between Sanitam Services (E.A) Ltd) Vs Rentokil (K) and Kentainers (K)[15]

This was an appeal from the judgment and order of the High court of Kenya at Nairobi dated 22nd May, 2002 where the High Court held that there was no patent infringement and declined to award any damages as a result.

In brief, the facts of this case are that On 21st January, 1999, M/S. Sanitam Services (E.A) Ltd (Sanitam) filed suit before the High court against two defendants: M/S. Rentokil (K) Ltd, which had lawfully changed its name in 1998 to Rentokil Initial Kenya Ltd (Rentokil), and Kentainers (k) Ltd. Rentokil in Kenya is one of the 38 or so companies operating in the world under the parent multinational company Rentokil Initial PLC. It offers various services including pest control, hygiene and health care. Under its health care division it provides sanitary disposal services and offers a wide range of sanitary disposal units. These include a step-on unit or foot operated bin for executive washrooms and hotels. Kentainers on the other hand were in the business of manufacturing a wide range of bins and containers of different sizes and shapes in accordance with instructions and moulds received from their customers. Rentokil was their customer and they manufactured the outer shell of a foot-operated bin christened "SANITACT".

Sanitam claimed in its suit, through its Managing Director, that it designed and invented a foot-operated litter/sanitary disposal bin in 1997 for use in the hygienic storage and disposal of sanitary towels, tampons, surgical dressings, serviettes and other waste material. It resolved that it would register a patent for the invention since it was a novelty in the local market. On 4th September, 1997 it submitted an application for registration to the then Kenya Industrial Property Office (KIPO) and the application was acknowledged by that office on 7th November 1997. It was advised to continue working on the invention and to make similar applications to other countries. By the time the suit was heard and determined, KIPO had not processed the application for issuance of the patent. But Sanitam had also made an application for registration with the African Regional Industrial Property Organisation (ARIPO) on 4th September, 1998 and a year later, on 25th October, 1999 they were notified by ARIPO that a patent No. AP773 had been granted on 15th October, 1999 to have effect in Botswana, Kenya, Uganda, Zambia and Zimbabwe.

Rentokil in its defence denied that the foot-operated bin was a patentable invention and averred that it had been in the market for many years before Sanitam claimed its invention. Indeed, they pleaded, its sister company in Malaysia (Rentokil Singapore PTE Ltd) had in February 1995 obtained a patent for the same device in the UK and Malaysia and it was the device imported by Rentokil to combine with the shell manufactured by Kentainers in order to make and supply foot-operated bins in Kenya. If any patent was granted to Sanitam therefore, it was erroneous and Rentokil had applied to KIPO for its revocation. Rentokil sought in a counterclaim that an injunction be issued to stop Sanitam from manufacturing or using the foot-operated sanitary bin. That counterclaim was however withdrawn shortly before the hearing of the suit and it was further clarified that the Malaysia company (above), had obtained a "Certificate of Registration of a design" and not a patent, for the pedal-bin which was the part imported by Rentokil from Malaysia. The top section of the bin or flap was also imported.

For their part Kentainers maintained that there was nothing new in the foot-operated bin claimed as an invention since foot-operated bins had been in the market for over two decades and it was not patentable. It denied the manufacture, supply or sale of any bins contrary to any patent held by Sanitam and sought the dismissal of the suit.

Upon hearing all the parties, the superior court, found that Sanitam was the holder of a patent No. AP 773 and it was registered by ARIPO on 15th October, 1999. It was not for the court to question the validity of the patent once granted unless an aggrieved party challenges its issuance through the technical bodies, KIPO and ARIPO, which are charged with the duty of investigating the invention and certifying its qualification for patent registration. The learned Judge further considered whether there was infringement of the said patent by Rentokil and Kentainers or either of them and found there was not. The suit was dismissed with costs. Nevertheless, the Judge made findings, on the quantum of damages, if any, awardable if he had found that there was infringement of the patent. He found there was insufficient evidence to prove any loss and therefore no basis for making any finding on the monetary loss awardable in the matter. He could only award Shs.1,000/= in general damages in the circumstances.

Sanitam was aggrieved by those findings and so filed an appeal to the Court of Appeal. The Court of Appeal in its judgment partially agreed with the High Court. Firstly it stated that no infringement could have occurred before grant of patent and that the onus of proof of infringement squarely lay on the party who claims that his industrial property has been infringed. That was the law as provided by statute.

Secondly, with regard to the patent granted by ARIPO, the Court of Appeal stated that there was no cross-appeal on the finding made by the superior court that the appellant had obtained a valid patent from ARIPO in October 1999. The grant of the patent was, however, neither bought to the attention of the respondents nor pleaded until 16th December 1999 after leave of the Court was obtained. In their view the judges of the Court of Appeal stated that the appellant would have been entitled to a temporary injunction to protect the patent until the determination of the suit but which was refused by the High court at that stage. However, the fact that ultimately the court found for the appellant on that issue it was only logical that injunctory relief which the appellant sought in the amended plaint should have been given. The Court of Appeal therefore granted an injunction to last the life of the patent with effect from 16th December 1999. However, it hastened to add that if there was any infringement of the appellant’s patent, then it could only have occurred after 16th December 1999 but that the appellant, who has the sole onus of proof, failed to place evidence before the High court to establish the infringement and so the High Court Judge could not be held at fault.

In addition, the Court of Appeal made it clear that damages for infringement of industrial property must be strictly proven if any substantial award is to be made. The Court restated the long standing principle on damages in intellectual property matters that the most natural relief against infringement of a lawful patent is an injunction. In addition, the owner of the patent ought in his pleading, to make an election as to the nature of damages he desires to obtain. It is improper to seek damages and at the same time for an account of the profits made by the person in breach.

In another Court of Appeal case of Jivanji Vs Sanyo Electrical Company Ltd.[16], 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. The trial judge entered judgment for the respondents ordering the appellants to deliver up all equipment trademarked as aforesaid and issuing an injunction restraining the appellants from conducting business with the same goods. The appellant only appealed on grounds that no damages could be awarded to the respondents since the company on the evidence on record was a totally different entity not party to proceedings and secondly, that special damages could not be awarded because they were not prayed for in the proceedings. Lastly that the court had wrongly exercised its discretion in awarding special damages.

It was held inter-alia by the Court of Appeal that there was no denial of the pleading that Sanyo-Armco was a subsidiary and agent of Sanyo which was the manufacturer and distributor of the goods subject matter of the suit. It was therefore deemed to be admitted and therefore the plaintiff was entitled to both general and special damages.

1.1.3 The High Court

The High Court is established by Article 165 of the Constitution. Its composition, organization and administration is determined according by an Act of parliament i.e. the Judicature Act Cap 8 of the Laws of Kenya. Currently, there are sixteen (16) High Court stations in the country. These are: Milimani, Kisumu, Kisii, Bungoma, Kakamega, Nakuru, Eldoret, Kitale, Embu, Nyeri, Mombasa, Malindi, Meru, Machakos and recently by Gazette Notice number 13478 of 26^th October 2011, the Chief Justice has established the Garissa High Court station with effect from 1^stOctober 2011.

 The High Court’s jurisdiction is as follows:

- unlimited original jurisdiction in criminal and civil matters; 
- jurisdiction to determine any allegations of violations of Rights under the Constitution; 
- jurisdiction to hear any question regarding the interpretation of the Constitution;
- Jurisdiction to determine any questions on inconsistency of other laws with the Constitution or contravention of the Constitution.
- Jurisdiction on any matter relating to Constitutional powers of State organs in respect of county governments and any matter relating to the Constitutional relationship between the levels of government; 
- questions relating to conflict of laws under the Constitution
- Supervisory jurisdiction over the subordinate Courts and over any person, body or authority exercising a judicial or quasi-judicial function, but not over a superior Court. 
- appellate jurisdiction to hear appeals from decisions of a tribunal appointed under the Constitution to consider the removal of a person from office; 
- Any other jurisdiction, original or appellate, conferred on it by legislation.

The High Court has no jurisdiction in matters concerning employment, labour relations, land and environment and matters whose jurisdiction is exclusively conferred on the Supreme Court.

From the above it is obvious that the High Court has jurisdiction over a wide range of criminal and civil matters. For that reason, in order to streamline its operations, the High Court is, for administrative purposes, divided into the following specialized divisions:

a) Family Division
b) Criminal Division
c) Civil Division
d) Commercial Division
e) Constitutional and Judicial Review Division

In specific regard to its jurisdiction on Intellectual Property law, the High Court exercises a wide scope of jurisdiction over disputes involving unfair competition, trade secrets, trade dress, passing off and infringement of Copyright and Trademarks. In particular, the High Court has exclusive jurisdiction on passing off and infringement of Trade Marks in Kenya. The Registrar of Trademarks has no jurisdiction to hear or determine passing off or infringement cases involving Trademarks

In this regard, the High Court has rendered several land mark decisions that have crystallized jurisprudence on various principles of Intellectual Property law in line with international best practices and standards. These principles have now come to be recognized as part of the law of Kenya on the Intellectual Property regime in question. The following decisions summarize some of the Key principles of Intellectual Property Law developed and crystallized by the High Court of Kenya.

In the case of Microsoft Corporation v. Microskills Kenya Limited,[17] Microsoft Corporation sued a local system builder, Microskills Kenya Limited, for illegally preloading business software on hundreds of computers without the consent of Microsoft as the owner of the copyright in the software and the Court held the defendant liable to damages of KES 25 million (approximately US$326,000). This effectively led to the winding up of the defendant.

In the case of Aniello Giella –v- Cassman Brown & Co. Limited,[18] the court addressed itself on the rights to trade dress. Justice Spry stated that an employer is entitled to have his trade secrets protected and he is entitled not to have his old customers enticed away from him. He is entitled to restrain such acts as are necessary for the protection of his rights.

The case of Biersdorf AG –v- Emirchem Products Limited[19]illustrates injunctive relief to restrain continued infringement of a trade mark. In this case, the plaintiff, Beirsdorf AG, is a limited company incorporated in Germany and the registered proprietor of Trade Mark No. 3211 consisting of the word "NIVEA" and the word NIVEA Crème". Under the two words, the plaintiff manufactures and distributes soap, toilet powders, creams and oils for the skin, shampoos and preparations for air and has been selling the products worldwide and in Kenya.

One of the plaintiff’s products is NIVEA Pure Petroleum Jelly. The defendant, Emirchem Products Limited is a company incorporated in Kenya selling a petroleum jelly under the name "NIVELIN". The plaintiff instituted infringement proceedings seeking an injunction to prevent the defendant from using the word NIVELIN for its petroleum jelly product.

The Court found that from the long presence of NIVEA in the Kenyan market supported by advertisement since 1970s, goodwill and reputation had been created and a prima facie case for the grant of an injunction had been made. Injunctive orders were issued against the defendant.

In the case of Supa Brite Limited-v-Pakad Enterprises,[20] the High Court adopted the principles laid down by Lord Oliver in Reckitt and Coleman Products Ltd. –v- Borden Inc,[21] and developed the three elements for determining passing off under common law. These are:

- The existence of claimant’s goodwill or reputation,
- A misrepresentation as to the goods or services offered by the defendant and
- Damage or likely damage to the claimant’s goodwill as a result of the defendant’s misrepresentation.

In relation to Copyright, the High Court in the case of Elijah Mira Wainaina –v- Interactive Media Services[22]granted an injunction to restrain copyright infringement in a song where the defendant had adapted and started selling ringtones from the plaintiff song.

1.2.0 Subordinate Courts

Subordinate Courts are established under Article 169 of the Constitution or by an Act of Parliament in accordance with that Article and they include;

a) the Magistrates Courts;
b) the Kadhi’s’ Courts;
c) the Courts Martial; and
d) any other Court or local tribunal as may be established by an Act of Parliament

The jurisdiction, functions and powers of these subordinate Courts are conferred by the Act of parliament establishing them.

1.2.1 The Magistrates Courts

Magistrates Courts are created under the Magistrates Courts Act Cap 10 of the laws of Kenya. They handle both civil and criminal matters.

There are currently one hundred and five (105) Magistrates Courts in the country that are stationed at either the district or divisional levels and there are over 300 Magistrates for the various Magistrates’ Courts in the country.

The hierarchy of Magistrates in descending order is as follows:

a)      Chief Magistrate

b)      Senior Principal Magistrate

c)      Principal Magistrate

d)     Senior Resident Magistrate

e)      Resident Magistrate

f)       District Magistrate

Jurisdiction of Magistrate’s Courts can either be geographical or monetary. The monetary jurisdiction of each Magistrate varies as prescribed by the Chief Justice. In general, all criminal matters involving infringement of Copyright or false representation of trademarks including counterfeits e.t.c are handled by Magistrate’s courts. To this extent Magistrates courts exercise jurisdiction over prosecution of offenders of Intellectual Property Rights in Kenya

In Republic –v- Doshi Iron Mongers et al,[23] the issue of parallel imports relating to trademarks was considered by the Chief Magistrate’s Court at Nairobi and the law later approved by the High Court. In this case, the allegation of trademark infringement involved imported Bic ballpoints. The court stated that the imported Bic ballpoints were found not to be counterfeit or substandard goods as had been alleged. It was submitted that other manufacturers of Bic ballpoint pens the world over are licencees, assignees, users or right holders of Bic ballpoint pens and hence the products that are manufactured by these persons in their own right either as licencees, assignees, users or right holders are not counterfeit or substandard products or an infringement of intellectual property rights. In the Kenyan context, the court found that the Bic ballpoint pens manufactured by HACO Industries are exported or are bought by traders who export them to other countries and when they enter into those countries, those Bic pens manufactured by HACO are genuine and are not classified as counterfeit or substandard or infringement of any intellectual property rights. Under the same rights, the court held that HACO cannot claim in Kenya that products imported by Kenyan companies from other countries are sub-standard or counterfeit goods or an infringement of intellectual property rights

Any Magistrate’s Court has the jurisdiction to try the offences relating to counterfeiting of trademarks and pass a maximum sentence of 2 years imprisonment.[24] However if the Magistrate determines that the offence warrants a sentence which is greater than it has power to inflict, he may, after trying the offender, instead of sentencing, commit the offender in custody to the High Court for sentence.

Note:

In Kenya, the fact that any matter in issue in any criminal proceedings is also directly or substantially in issue in any pending civil proceedings shall not be a ground for any stay, prohibition or delay of the criminal proceedings.[25] This basically means that an offender may concurrently with criminal proceedings be sued for damages in a civil suit. This translates to speed and efficiency of court processes.

1.2.2 Other Courts/Tribunals Established by an Act of Parliament

Other than the subordinate Courts in 1.2.1 to 1.2.3 above, other Courts and tribunals are established by Acts of parliament to supplement the ordinary Courts in the administration of justice. Tribunals on the other hand are established under various laws made by Parliament to deal with disputes that arise in the course of the regulation and administration of specific matters.

The most common tribunals in Kenya are:

a)      The Industrial Property Tribunal

b)      The Registrar of Trademarks

c)      The Seeds and Plant Varieties Tribunal

d)     the Industrial Court established to deal with labour disputes;

e)      the Land Disputes Tribunals which only deal with disputes relating to land issues such as the division of land and boundaries of land and so on;

f)       the Rent Restriction Tribunal which only hears and resolves disputes between landlord and tenants of residential houses; and

g)      The Business Premises Tribunal which only hears and decides cases involving landlords and tenants of business premises such as shops and hotels.

The jurisdiction and composition of these tribunals is determined by the relevant Act which establishes them.

3.1.0 Managing Director of the Kenya Industrial Property Institute

The Managing Director is appointed by the Board of Directors of the institute[46]. The Managing Director is responsible for the day-to-day management of the affairs of the Institute. To this extent, the Managing Director implements the functions of the Institute. The Institute is charged with the responsibility to consider applications for grant of industrial property rights and to screen technology transfer agreements and licenses.

 In the discharge and implementation of the functions of the Institute, the Managing Director makes the decisions to grant or refuse the grant of industrial property rights. He also makes the decisions to register or refuse to register technology transfer agreements and licenses. In addition, formal and substantive examination of patents is done under the name of the Managing Director for and on behalf of the Institute.

The MD also conducts opposition hearings against industrial design applications whenever an application to register a design is opposed.[47] In the discharge of these functions, decisions are made. These decisions determine the nature and extent of claims recognized with regards to patents, utility models, industrial designs and technovations. Any party aggrieved by the decision of the Managing Director pertaining to the grant or refusal to grant may appeal to the Industrial Property Tribunal.[48]

The role of the Managing Director in enforcement of patents, industrial designs and utility model is very limited. The role is purely administrative with regards to making the decision to grant or refuse the grant of the respective rights. As regards industrial design applications, the Managing Director has a very limited enforcement role in opposition proceedings where the application forms part of prior art of an existing industrial design. Substantively, it can be stated that the Managing Director of the Institute has no role to play in enforcement of patent rights, utility model rights and industrial design rights.[49]

3.2.0 The Industrial Property Tribunal (the ‘IPT’)

3.2.1 Establishment and composition of the IPT

The IPT is established under Section 113 of the Industrial Property Act (IPA) for two main purposes viz;

·         Hearing and determining appeals where provision is made for appeals from the decisions of the Managing Director under the IPA and

·         Exercising the other powers as conferred on it by the IPA.

The IPT consists of a chairman and four-members appointed by the Minister for Industrialization.[50] The chairman of the Tribunal should be a person who has been a judge or who is qualified to be appointed as a judge of the High Court of Kenya i.e. a person with at least ten years’ experience as a superior Court judge or professionally qualified Magistrate; or at least ten years’ experience as a distinguished academic or legal practitioner or such experience in other relevant legal field.

At least two members of the Tribunal should be persons who have, for not less than seven years, been qualified and entitled to practice as advocates in Kenya and the other two members must have experience and/or expertise in industrial, scientific and technological fields.

The sittings of the tribunal are discretionary as it sits at such times as it may appoint.[51]

3.2.2 Jurisdiction of the IPT

The IPT’s jurisdiction extends to various disputes relating to Patents, Industrial Designs, utility models and Technovations in the following circumstances:-

a)Appeals against any decision by the Managing Director refusing to register a Patent [52]

b)Appeals against the decision of the Managing Director refusing to register a contractual license[53]

c)Applications for grant of compulsory licenses to exploit a Patented invention for non-working reasons[54]

d)Applications for grant of compulsory licenses to exploit a Patented invention for inter-dependable Patents[55]

e)Applications for transfer of compulsory licenses[56]

f)Applications for cancellation of compulsory licenses by any interested party, or by the Minister or owner of the Patent[57]

g)Applications for fixing of terms of non-exclusive licenses where the owner of the Patent has registered "licenses as of right" on his Patent.[58]

h)Determination orders for exploitation by the government or a third party authorized by the government, of a Patented invention in the field of semi-conductor technology on grounds of non competitiveness[59]

i)Appeals from the decisions of the Minister on exploitation of Patented inventions by the government, or by third parties authorized by the government[60]

j)Appeals from the decisions of the Arbitration Board regarding disputes between an employer and an employee on technovations[61].

k)Applications for revocation of a Patent, Industrial Design or utility model[62]

l)Applications for injunctions to prevent infringement of a Patent, Industrial Design or utility model or for continuation of such infringement and damages[63]

m)Applications for declaration of non-infringement of a Patent, Industrial Design or utility model[64]

n)Applications for injunctions to prohibit the threat of infringement proceedings and damages thereof [65]

o)References from the Managing Director, for directions in matters involving a point of law or matters of unusual importance or complexity[66]

3.2.3 Powers of the Tribunal.

The IPT has judicial powers to make any order for the purposes of securing the attendance of any person, the discovery or production of any document, or the investigation or punishment for any contempt of Court, which the High Court has power to make.[67]

 In addition, upon any appeal to the Tribunal under the IPA, the Tribunal may -

a)confirm, set aside or vary the order or decision in question;

b)exercise any of the powers which could have been exercised by the Managing Director in the proceedings in connection with which the appeal is brought; or

c)Make such orders as to costs as it may deem fit.

In exercise of its jurisdiction and powers, the IPT has rendered several landmark decisions particularly on the standard of protection of Industrial Designs where it has sought to widen public space for innovation. For instance, in the case of Power Technics Limited –v- Power Engineering International Limited [68]the Requestor, Power Technics Limited filed a request under Section 106 of the Industrial Property Act seeking an injunction to prevent infringement of its registered Industrial Design No. 296. In its Statement of Case, the Requestor stated that it had designed Sectionalized tapered columns for street lighting sometime in 1998 and supplied them to various customers in Kenya and Tanzania. It was alleged that the Respondent had infringed the Industrial Design No. 296 by making, manufacturing and selling similar or identical streetlights. The Respondent’s reply was that the Requestor’s invention in Design No. 296 was not obvious, as it did not involve any inventive step having regard to what was common knowledge at the date of the application.

It was further submitted that the alleged invention was in the public domain since it was neither new nor original, the invention having been disclosed to the public and published in various catalogues. The Industrial Property Tribunal in finding that the Respondent had not infringed the design expunged Industrial Design No. 296 from the register stating that the evidence showed that tapered Sectionalized street poles were in existence in Kenya and elsewhere prior to Design 296 being registered. The Tribunal concluded that the evidence on record left no doubt that the invention embodied in Design 296 was in the public domain well before it was registered.

3.2.4 Appeals to the High Court

Any party to the proceedings before the Tribunal may appeal[69] from any order or decision of the Tribunal, to the High Court and upon the hearing of such an appeal the High Court may -

a)      confirm, set aside or vary the order or decision in question;

b)      remit the proceedings to the Tribunal with such instructions for further consideration, report, proceedings or evidence as the High Court may deem fit to give;

c)      exercise any of the powers which could have been exercised by the Tribunal in proceedings in connection with which the appeal is brought; or

d)     Make such order as it may deem fit as to the costs of the appeal or of earlier proceedings in the matter before the Tribunal. [70]

Unfortunately, the High Court has not lived up to expectation in this regard and has, according to critics, shied away from addressing itself on technical IP issues involving Industrial Designs and Patents cases brought before it on appeal.[71] Critics have argued that such cases brought before the High Court on appeal end up being returned to the IPT under the High Court’s powers to ‘remit proceedings to the Tribunal with such instructions for further consideration, report, proceedings or evidence as the High Court may deem fit to give.’[72]

3.3.0 The Registrar of Trademarks

3.3.1 Establishment and composition

The Managing Director appointed under Section 11 (1) of the IPA also doubles up as the Registrar of Trademarks (the ‘Registrar’)[73] and for the avoidance of doubt, a tribunal is defined under the TMA as including inter-alia the Registrar.[74]

The Registrar is assisted in discharging his duties under the TMA by a deputy Registrar and assistant Registrars and such other person, who must be an advocate of seven years practice in Intellectual Property matters, as may be appointed by the Minister for trade on the recommendation of the Board of KIPI, to assist the Registrar in the performance of any of the functions or the exercise of any of the powers conferred upon the Registrar under the TMA with respect to the conduct of hearings relating to opposition to applications for registration or rectification of the register.[75]

3.3.2 Jurisdiction of the Registrar

The Registrar presides over both contentious and non contentious matters involving specific aspects of Trademarks in Kenya. The TMA prescribes the scope of the Registrar’s powers and mandate and provides for channels of appeal from the decisions of the Registrar.

 The jurisdiction of the Registrar over non-contentious Trademarks matters is mainly administrative and involves matters regarding the registration of Trademarks, Trademarks searches, screening of Trademarks licenses and licensing of Trademarks, assignment of Trademarks and general advisory opinions on registrability of Trademarks.

 The Registrar’s Jurisdiction over contentious matters relating to Trademarks on the other hand is comparatively wider than that of the Managing Director and the Registrar is endowed with a great deal of discretion in the exercise of his powers in such instances. In particular, the Registrar’s jurisdiction extends to the following circumstances;

a)the Registrar has the powers, upon request by an applicant for a Trademark, to hear submissions against citations or conditions raised by the registry (read examiner)[76] under of Section 20 (2) of the TMA.

b)Any person may, within the prescribed time from the date of the advertisement of a Trademark application in the Industrial Property Journal (‘IPJ’), give notice to the Registrar that he/she wishes to oppose the registration of the mark in Kenya.[77] The Registrar presides over such opposition hearings in accordance with the procedure laid out under the Trademarks Rules (the ‘rules’).[78]

After hearing the parties, if so required, and after considering the evidence, the Registrar has the power to decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.

c)The Registrar can hear an application by any aggrieved person to remove from the register of Trademarks, a registered Trade Mark in respect of any of the goods or services in respect of which it is registered on the ground that either the Trade Mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and that there has in fact been no bona fide use of the Trade Mark in relation to those goods or services by any proprietor thereof for the time being up to the date one month before the date of the application; or up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the Trade Mark was a registered Trade Mark and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being. [79]

The procedures to be followed under Section 29 (1) are also laid out by the Rules.[80] However, unlike in Trade Mark opposition cases, the Rules state that the Registrar cannot simply expunge a mark from the register if the registered proprietor fails to file an answer to an expungement application.[81] In practice, the Registrar has on several occasions in circumstances where no answer to an expungment action is filed, required applicants for expungment to file evidence by way of statutory declarations for his decision.

d)Subject to his jurisdiction under Section 35 of the TMA (see paragraph e) below) the Registrar has the jurisdiction to cancel the registration of a person as a licensee on the application in writing in the prescribed manner of any person on any of the following grounds –

1. that the licensee has used the Trade Mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion;
2. that the proprietor or the licensee misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;
3. that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested[82]

e)Any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or, at the option of the applicant to the Registrar, and the Court or the Registrar may make such order for making, expunging or varying the entry as the Registrar may think fit.[83] Like under Section 29(1) the procedure to be followed under Section 35 (1) are those under rules 82 to 83 and 48 to 57 of the rules. (2)

The Registrar may in any proceeding under Section 35(1) decide any question that it may be necessary or expedient to decide in connexion with the rectification of the register.

f)On application by any person aggrieved to the Registrar, the Registrar may make such order as the Registrar may think fit for expunging or varying the registration of a Trade Mark on the ground of any contravention of, or failure to observe, a condition entered on the register in relation thereto.[84]

Note:

In proceedings for rectification or expungement under Sections 29, 35 or 36 of the Trade Marks Act, an applicant has an option to make an application either to the High Court or to the Registrar. However, if an action concerning the Trade Mark in question is pending, the application shall be made to the Court and if in any other case the application is made to the Registrar, he may, at any stage of the proceedings, refer the application to the Court, or he may after hearing the parties determine the question between them, subject to appeal to the Court

In all proceedings before the Registrar under the TMA, the Registrar has power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court or a judge thereof, be enforced in the same manner as a judgment or order of the Court to the same effect.[85]

In exercise of his jurisdiction, the Registrar of Trademarks has made several decisions that have greatly influenced the protection of Trademarks, particularly those belonging to vulnerable foreigners, in a way that has increased vigilance in the protection and enforcement of IPR’s in the country. Of particular significance is the Registrar’s decision in the case of Stripes Limited –v- Hair Zone Inc.,[86] where the Registrar of Trade Marks addressed the controversial issue of protection of well-known marks in Kenya. In this case, on 10th May 2000, the Applicant, Stripes Limited, lodged an Application for Registration of Trade Mark No. 49869 SENSATIONS & DEVICE with respect to all goods in Class 26. One 4th September 2000, the Opponent Hair Zone Inc., (USA) the owners of Trade Mark SENSATIONNEL (Stylised), file a Notice of Opposition to the registration of the Trade Mark SENTATIONS & Device. The Opponent’s mark was registered in the United States of America but unregistered in Kenya.

The grounds of opposition were that the Opponent’s Trade Mark SENSATIONNEL (Stylised) is and has been extensively used on "wigs" and hairpieces, hair tresses, false hair, hair additions and attachments" and has become well known to the Kenyan public by virtue of sales of the aforesaid goods.

In delivering the ruling, the Registrar discussed the law on well-known marks in Kenya. At the outset, the Registrar pointed out that being a well-known mark is not an expressly stated ground for refusing registration of an unregistered or a registered mark under Sections 14 or 15 of the Trade Marks Act. However, under the said Sections, a well-known mark may be a ground to disentitle a mark to protection in a court of justice.

Further, an Applicant attempting to register a well-known mark may be prohibited on the ground of likelihood to deceive or confuse the purchasing public. The Registrar stated that unlike in the normal opposition case under section 14 and 15 of the Trade Marks Act, the burden of proving the existence of reputation and goodwill and whether a mark is well known in Kenya lies with the proponent that the mark is well known. The Registrar ruled that in order to determine whether a mark is well known in Kenya, guidance shall be taken from the Joint Recommendation Concerning Provisions of the Protection of Well-known Marks.[87] It must be noted that Kenya is a member of the Assembly

 In the Joint Recommendation, it is noted that:

a) In determining whether a mark is a well-known mark, the competent authority shall take into account any circumstances from which it may be inferred that the mark is well known.

b) In particular, the competent authority shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not limited to, information concerning the following:

·         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.

Applying the foregoing tests in the present case, the Registrar made the decision that Hair Zone Inc. had not tendered any evidence to prove the existence of goodwill in the SENSATIONNEL mark in Kenya. Further, it was ruled that Hair Zone Inc. had not shown that the term SENSATIONNEL when applied to a mark specifically refers to the company as the source of the products.

 To boot, the registrar has not hesitated to expunge from the register marks which he has considered to have been registered without sufficient cause especially by business men in Kenya who at times rush to register confusingly similar marks in order to ride on the coat tails of multi-nationals who have invested substantial amounts to develop good will in their marks. The latest high profile case in this regard is the case in the matter of application to Registrar for the expungment of the entry on the trade marks register of Trade Mark no. KE/T/2008/062812 Samper (device) in class 16 in the Name of Sonal Holdings (K) limited by Proctor & Gamble who is the registered owner of the Trademark T. M No. 23607 PAMPERS (Word) in Kenya. In this case, the Registrar held that Sonal Holdings (K) Limited had knowingly crafted its trademark in a way that rendered it confusingly similar to Proctor and gambles mark for use 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.

3.3.3 Appeals from the decisions of the Registrar

Appeals lie to the High Court from the decisions of the Registrar as of right in certain specified circumstances and in any such appeal from a decision of the Registrar to the High Court, the High Court has and indeed exercises the same discretionary powers as under the TMA as are conferred upon the Registrar. The following are the circumstances under which an appeal lies as of right;

a)An appeal may be made in the prescribed manner, from the decision of the Registrar on submissions made against citations or conditions raised by the registry (read examiner) under of Section 20 (2) of the TMA[88] and on the appeal the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted.

b)The decision of the Registrar arising from an opposition hearing is subject to appeal to the High Court.[89]

c)A decision of the Registrar under Section 31 (8) above is subject to appeal to the High Court.[90]

The case between Glaxo Group Limited Vs Syner-med Pharmaceuticals Limited,[91]was an appeal by Glaxo Group Limited from the decision of the Registrar of Trade Marks to the High Court following the Registrar’s decision in an opposition. Glaxo Group Ltd and Syner-med Pharmaceuticals Ltd are both pharmaceutical companies engaged in the manufacture and sale of pharmaceutical products. The appellant registered a trademark in Kenya under Trademark No.24634 in respect of class 5 in relation to Pharmaceutical and medicinal preparations. The trademark that the appellant registered is "ZINACEF". The trademark was registered on 9^thMarch 1978. Since then, the appellant used the trademark to market an antibiotic drug under the name. The active ingredient of the antibiotic sold as "ZINACEF" is a compound known as Cefuroxime. On 27^th April 2006, the respondent applied to the Registrar of Trademarks to register the trade name "SYNERCEF" as a trademark in the same class 5 in respect of pharmaceutical and medicinal preparations under the Trade Marks Act. The respondent intended to use the trademark to market its antibiotic product containing the same active ingredient as that of the appellant i.e. Cefuroxime. The appellant opposed the registration of the said trademark. The appellant was of the view that the registration of the trademark "SYNERCEF" would cause confusion in the market as the trade name "SYNERCEF" sounded phonetically and appeared visually as the already registered trademark of the appellant "ZINACEF".

 The Registrar of Trademarks heard representations made by the appellant and the respondent and on 20^th July 2009, made the following ruling:

"Based on the above-mentioned relevant factors, the Registrar makes a ruling that the applied for mark SYNERCEF is not confusingly similar to the registered mark ZINACEF. This ruling is based on the fact that the goods covered under the trademark are prescription only drugs and that the packaging materials clearly identify the origin of the product. The gist of this finding is that the applied for trademark SYNERCEF in TMA 59060 shall proceed to registration. The opposition to registration of the mark SYNERCEF is dismissed with costs".

The appellant was aggrieved by this ruling and pursuant to the provisions of Section 21(6) & (7) of the Trade Marks Act filed an appeal to this court. The appellant raised nine (9) grounds of appeal challenging the decision of the Registrar. In particular, the appellant was aggrieved that the Registrar had totally failed to appreciate the provision of Section 7 of the Trade Marks Act which gives a registered proprietor exclusive use of a registered mark.

 The High court in its judgement reversing the Registrar’s decision stated as follows;

‘In the present appeal, it was evident that the Registrar of Trade Marks fell in error when he truncated the name ‘SYNERCEF’ and ‘ZINACEF’ by excluding the suffix ‘CEF’ and thereby reaching the wrong conclusion that the prefix ‘SYNER’ and ‘ZINA’ had no meaning and therefore the subsequent registration did not constitute an infringement of the appellant’s trade name. I think the correct 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 arrived at a different decision. Having considered the applicable law, it is clear that the words ‘SYNERCEF’ and ‘ZINACEF’ are phonetically similar in pronunciation that it is likely to cause confusion and deception in the market.’

Note:

The Registrar has no jurisdiction to hear disputes relating to passing off or infringement of unregistered and registered Trademarks respectively. Such disputes can only be instituted before the High Court.[92]

3.4.0 The Seeds and Plant Varieties Tribunal (the ‘SPV Tribunal’)

3.4.1 Establishment and composition

The SPV Tribunal is established under Section 28 (1) of the Seeds and Plant Varieties Act Cap 326 Laws of Kenya (the ‘SPVA’). However, Section 28 (1) was for a long time not operational until recently in 2006 when the seed and trade association of Kenya (‘STAK’) petitioned for its operationalization. The Minister for Agriculture responded and appointed a Seeds and Plants Tribunal. [93]Further appointments were made in August 2009 for a period of 3 years.

According to the sixth schedule of the SPVA, the Minister for Agriculture is the one mandated to appoint a chairman for the Tribunal who must be an advocate.[94] The chairman serves for a term that the Minister may specify in the instrument of appointment,[95] and if the Minister is satisfied that the chairman is unfit to continue in office or incapable of discharging his duties, he may revoke the appointment of the chairman.[96]

In case of temporary absence or inability of the chairman to act, the Minister may appoint any other person who is an advocate to act as deputy for the chairman and a person so appointed shall when so acting have all functions of the chairman.[97]

 In addition to the chairman, the Minister for Agriculture appoints other members of the SPV Tribunal selected from a panel of persons who have wide general knowledge in the field of agriculture, horticulture or forestry; and a panel of persons who have specialized knowledge of particular species or group of plants. Similarly, the Minister has power to revise such panels from time to time and the power to revise the panels includes power to terminate a person’s membership of either of them.[98]

3.4.2 Jurisdiction of the SPV Tribunal.

The general jurisdiction of the SPV Tribunal is specified under Section 29 of the SPVA.

 However, with specific regard to plant breeder’s rights;

a) any person may appeal to the Tribunal where he/she is aggrieved by any decision;

                                i.            to allow or refuse the grant of plant breeder's rights; or

                              ii.            to cancel the grant of plant breeder's rights; or

                            iii.            to allow or refuse an application for extension of the period of plant breeders rights; or to terminate such an extension granted

                            iv.            to allow or refuse any application made for voluntary of compulsory licences against plant breeder’s rights

b)Under Section 29 (4) the SPV Tribunal in addition to the above jurisdiction can hear and determine any matters agreed to be referred to the Tribunal by any arbitration agreement relating to the infringement of plant breeder's rights, or to matters which include such infringement. No right of appeal lies from a decision of the SPV Tribunal under this subsection.

c)      The SPV Tribunal, in exercising its statutory jurisdiction, may order any party to the proceedings to pay to any other such party either a specified sum in respect of the costs incurred by the second mentioned party, or the taxed amount of those costs, and any costs required to be taxed for that purpose shall be taxed in the same manner and on the same scale as costs in a subordinate Court of the first class.[99]

d)     The chairman of the Tribunal has power to administer oaths to witnesses in any proceedings before the Tribunal.

So far the Tribunal has not made a decision from any of the cases submitted before it. This has been blamed on a procedural technicality regarding the Tribunal’s rules of procedure which are yet to be approved by the Chief Justice as required by the SPVA. The new Chiefr Justice of Kenya under the new constitution was only recently sworn in and the rules are therefore expected to be approved soon.

3.4.3 Appeals

Generally, a decision of the Tribunal is final and conclusive except on a question of law in which case a final appeal to the High Court, from a decision of the Tribunal, may lie.[100]

3.5.0 Competent Authority

3.5.1 Establishment and composition

Under Section 48 (1) of the Copyright Act No. 12 of 2001(the ‘Act’) the Attorney General may appoint a Competent Authority for the purpose of exercising, jurisdiction under the Act where any matter requires to be determined by such authority.

The "Competent Authority" means an authority of not less than three and not more than five persons, one of whom shall be a person qualified as an advocate of the High Court of Kenya of not less than seven years' standing or a person who holds or has held judicial office in Kenya who shall be the chairman, appointed by the Attorney General for the purpose of exercising jurisdiction under the Act where any matter requires to be determined by such authority.[101]

3.6.0 The ARIPO Board of Appeal

The Board of Appeal ("the Board"), is established under section 4bis of the Harare Protocol on Patents and Industrial Designs Within the Framework of the African Regional Intellectual Property Organization (1982)

The Board consists of five (5) members who are experienced in intellectual property matters two of whom are examiners and are appointed by the Administrative Council of the Organization for a period of two years renewable once for another term of two years and from the member states of the Organization.

The functions of the Board are;

(a) to consider and decide on any appeal lodged by an applicant arising from the refusal of an application at the formality or substantive examination stage.

(b) to review any final administrative decision of the Office in relation to the implementation of the provisions of this Protocol, the Banjul Protocol on Marks or any other Protocol within the framework of ARIPO

The decisions of the Board are final.

It is instructive to note that under the ARIPO protocol, where an applicant appeals to the Board in the terms set out above, Kenya as a designated country may communicate to ARIPO before the expiry of 6 months after the notification of appeal to the Board that where the patent is granted by the Board, it will not recognize that patent. However, if no such communication is received within 6 months after the notification of appeal to the Board, and the ARIPO Office grants a patent resulting from an appeal from the Board, then Kenya will henceforth be bound by the decision of the Board to the extent that a patent, industrial design, utility model or trademark granted by the ARIPO office will be recognized and protected in Kenya.

Note:

The Industrial Property Act makes patents granted by ARIPO as effectual and binding in Kenya as any patent that would ordinarily be granted by KIPI.[103]

The Board of Appeal has In The Matter of Patent Grant No. AP 773 Entitled "Foot Operated Sanitary/Litter Bin" In The Name of Sanitam Services (EA) Limited [104]exercised its jurisdiction on appeal by reinstating on to the ARIPO register a patent which had been removed from the register by the ARIPO office for non-payment of maintenance fees.

4.1.0 Enforcement of IPR’S

Rights have no value unless they can be enforced. To this extent, Intellectual Property as intangible rights to creativity and innovation have been protected in Kenya thanks to the enforcement powers granted to them by their respective constitutive legislation and although they have not performed to their optimal best, they have achieved great milestones in compelling recognition, compliance and respect of IP rights conferred by Patent, Trademark, Industrial Designs, Copyright and very soon Plant Breeders Rights and Geographical Indications.

In essence through the enforcement of IP rights these Tribunals have achieved the following;

a)          The legal validity of IP rights have been preserved by preventing passing off and infringements of Industrial Designs and Patents and registration of offending Trademarks;

b)          The rights of IPR holders and consumers have been protected and upheld through the screening of Trademarks licenses, prevention of registration of similar Trademarks that are bound to cause confusion, screening of technology transfer agreements and licenses in Patents to prevent archaic and oppressive agreements that may stifle availability of vital products in the market e.t.c

c)          The tribunals have ensured that IPR holders do not abuse their exclusive rights for instance through expungment of Trademarks that are not used or Industrial Designs and Trademarks that are registered without sufficient cause.

d)         The Tribunals have by some of their decisions encouraged vigilance in the protection and enforcement of IPR’s and therefore indirectly enhanced innovative space in Kenya.

4.1.1 Efficiency of time and resource

Due to the specialized nature of the Tribunals, they have managed to develop some jurisprudence on various procedural and substantive Intellectual Property law issues which have helped hasten decision making on whether or not to litigate for IPR holders. In addition, the tribunals have tremendously assisted in reducing the backlog of cases before the mainstream Courts which has translated to quicker and lesser expensive litigation. The time it generally takes to conclude a case before a specialized tribunal is approximately 6 months whereas it would take almost 3 years for a similar case to be concluded in the mainstream court. This efficiency is attributable mainly on the following special attributes of the specialized tribunals in Kenya;

1)The procedure for instituting and prosecuting a dispute is clearly provided for and with strict timelines. This makes the process self propelling in the sense that one process automatically initiates the next as soon as the prescribed timelines are met.[105]

2)All the pleadings necessary for the institution or notification of a dispute and subsequent filings are prescribed by the relevant statutes. This makes the process far much simpler and less complicated than the procedure in the mainstream courts and hence easily accessible even to lay people. In addition, this makes the process far much cheaper for litigants.

Bearing in mind the commercial nature of these decisions, the significance of the timely manner with which they are churned out cannot be gainsaid.

In most if not all of the Tribunals, evidence is tendered by way of statutory declarations whose formats are themselves prescribed and viva voce evidence is sparingly used and only when required by the tribunal. To this end, costs of litigation are greatly reduced because witnesses are not required to attend hearings in person. In practice, this has proven to be of great benefit to foreign litigants who would otherwise spend millions of shillings travelling to and from their countries of residence to attend hearings in Kenya

4.1.2 Expertise

Whereas mainstream Courts are run by judges of general legal expertise, the technical nature of Intellectual Property law sometimes requires expert handling which has been readily available at the specialized IPR Tribunals. In the industrial property Tribunal and the seeds and plant varieties Tribunal, persons with special scientific and technical expertise and persons who have wide general knowledge in the field of agriculture, horticulture or forestry; and who have specialized knowledge of particular species or group of plants sit as members[106] and are therefore able to assist lawyers in interpreting technical and scientific issues arising in disputes before them. In addition, the Industrial Property Tribunal has powers to call in assessors of special expertise to assist them in their decision making.[107] For those reasons, specialized IPR Tribunals have offered litigants fora that properly and effectively understand their issues without the need for the litigants to spend more money hiring expert witnesses to help with their cases. In addition, the comprehensive understanding of and familiarity offered by such expertise provides greater consistency in the decision making process hence providing litigants with a more predictable outcome of the proceedings.[108]

Finally, IPR Tribunals have clearly spelt out mandates and jurisdiction. This basically means that they are able to focus on only the relevant issues within their express mandate hence saving them the precious time and resources in dealing with omnibus suits that are the characteristic of mainstream Courts. In addition, more and more advocates are encouraged to specialize in this area of law and hence provide effective quality service to IPR owners.

4.1.3 Compliance with International standards

The challenges outlined in paragraph 5.0 below notwithstanding, the specialized Tribunals in Kenya have done comparatively well in attracting confidence and investment into East Africa by international investors. Kenya is a signatory to the Patent cooperation Treaty (PCT)[109], the Madrid Agreement and Protocol concerning the International Registration of Marks[110], the Trade Related Aspects of Intellectual Property Rights (TRIPS)[111], the ARIPO protocol on protection of industrial property[112], the 1993 Banjul Protocol on Marks and Regulations for Implementing the Banjul Protocol[113] and the Paris convention for protection of industrial property rights of 1883.[114]

These specialized Tribunals have therefore ensured that Kenya reciprocates in its international responsibilities under the international trade law principle of ‘National treatment’ through the equal protection and enforcement of Intellectual Property rights belonging to non-nationals. For that reason, thousands of foreign investors have set up shop in Kenya as their destination of choice with the belief in the system of IP protection and enforcement.

4.1.4 Increased credit facilities for entrepreneurs

As a result of the foregoing achievements, Companies with high net worth of IPR’s have successfully influenced the credit sector of financial institutions which have now shown willingness to hold certificates of grant of Patents, Trademarks, and Industrial Designs etc as security for loan facilities through debentures and floating charges. This has greatly shifted over-reliance on traditional securities and enabled greater economic growth for individual firms and the national economy.

4.1.5 Enhanced consumer protection

Specialized IPR Courts and tribunals have greatly enhanced consumer protection in Kenya by rendering decisions that prevent protection for confusingly similar marks or Industrial Designs in Kenya. These are mainly public policy issues that the Tribunals have sought to uphold especially in cases where human health is concerned.

A case in point is the decision of the Registrar of Trade Marks In the matter of opposition proceedings against TMA No. 57652 MAXIME in class 5 by the owner of TM NO. 39254 MAXIPIME (ruling delivered and dated 16th March 2010), where the Registrar refused to register a confusingly similar mark proposed to be used for pharmaceutical products on grounds that doing so would endanger public health. The Registrar found that ‘the marks MAXIME and MAXIPIME are so closely similar to be able to cause confusion having only one letter missing that is ‘P’ and that the likelihood of confusion was even further enhanced by the fact that the marks covered pharmaceutical goods in class 5.’

This decision was subsequently affirmed in an opposition case In the matter of application to register TMA no. KE/T/2009/066444 Aclotas in class 5 in the name of accord healthcare (Kenya) limited and opposition thereto by Novartis Ag, owner of Kenya Trade Mark registration tm no. 62876 Aclasta in class 5 and international registration IR 785060 Aclasta in class 5.

These decisions are very significant and have underlined the function of Trade Marks as a distinguishing guise and left no doubt that the Registrar has a duty to the public to ensure that they are not deceived into buying products erroneously believing them to be what they are actually not.

In addition, specialized tribunals in Kenya have not shied away from upholding public policy on access to medicines under the enabling TRIPS flexibilities and the concomitant provisions on compulsory licensing under the Industrial Property Act. Kenya as developing country has greatly benefited from these flexibilities for the provision of cheap and affordable generic drugs to patients who would otherwise never afford originator drugs.

A case in point is one between Cosmos Limited a local company incorporated in Kenya and Glaxo Group Limited on the one hand and Boehringer Ingelheim International Gmbh of Germany on the other, in 2004. In both cases, the Managing Director of KIPI was able to adjudicate on an application to register a compulsory licence in favour of Cosmos Limited and secure a voluntary grant of licenses as opposed to compulsory licenses. The effect of the Managing Director’s decision was two pronged i.e. ensure compliance with the law which requires that before registering a compulsory license, the Managing Director must satisfy himself that the licensee has made prior unsuccessful efforts to secure a voluntary license at reasonable terms and secondly screen the compulsory licenses to ensure that no oppressive terms are contained in them that would hinder effective exploitation of the license. This ensured a win-win situation for all parties i.e. licensee, licensor and the public.

5.0 The weaknesses and challenges of specialized Intellectual Property Tribunals in Kenya;

The effectiveness of the specialized tribunals discussed in 3.0 above has not been without blemish. Whilst they offer the common advantages and efficiencies of specialization and technical expertise free from the rigours of mainstream Courts of law, they have also experienced challenges and weaknesses in their operations that have hindered their realisation of expectations of players in the Intellectual Property arena.

Both in theory of the law and resultant practice, these specialized tribunals are dogged by a number of challenges that affect their output and these challenges are the function of various political, economic and legal factors and are inextricably intertwined. Most of these challenges are common to all the specialized IP Tribunals and they include the following;

g)      Methods and procedures of appointment and removal of tribunal members

h)      Organization and qualifications of tribunal members

i)        Terms and period of service of tribunal members

j)        Resource allocation to the tribunals

k)      Law reporting system of the tribunals

l)        Public ignorance.

 However, owing to the nature of Intellectual Property in question, each tribunal is equally faced with unique challenges of its own over and above the ones listed above. They are discussed below;

5.1.0 The Managing Director

Generally, the challenges facing the office of the Managing Director of KIPI are similar to those facing the IPT[115]save for the fact that the unique characteristic of the Managing Director as the chief administrator of KIPI, the Registrar of Trademarks and the secretary to the Board of KIPI. For purposes of efficiency and good professionalism, the Managing Director may not be able to satisfactorily discharge his professional duties to the optimal capacity expected of him due to his several responsibilities. It goes without saying that specialization and division of labour are fundamental formulae for efficiency and excellence

5.2.0 The Industrial Property Tribunal

5.2.1 Methods and procedures of appointment and removal of tribunal members

The IPT members are appointed by the Minister of Industrialization through gazzetment in the official Kenya Gazette. The IPA gives the Minster a carte blanche in making these appointments. In practice however, this has been a major loophole that has greatly compromised the consistent discharge of the tribunal’s duties. The trend of appointments of members of the IPT has over the years proven that political patronage and a perceived sense of entitlement is the main deciding factor of appointment to the IPT.

For instance, at some point in the year 2002, the IPT was literally non-existent for more than 6 months and therefore no cases could be heard by the IPT during that period. Obviously this had profound effects on pending cases before the IPT and denied other intending litigants the chance to file cases before the IPT not to mention the backlog of cases resulting there from.

Recently in the year 2011, during the reign of Hon. Henry Kosgey as Minister for Industrialization, the IPT was reconstituted only to be immediately revoked and reconstituted, by his successor Hon. Amason Jeffah Kingi upon his appointment in an acting capacity at the Ministry of Industrialization. The reasons for the latter revocation were mainly based on the qualifications of some of the predecessor members which did not meet the criteria set by the IPA. This state of affairs aptly captures the whimsical manner of appointments to the extent that statutory qualifications can at times be disregarded for political expediency

Moreover, the general effect of the haphazard manner of appointments by successive Ministers is that litigants end up shouldering huge legal costs related to litigation before the IPT and due to the commercial nature of Intellectual Property rights, they also suffer huge commercial losses especially where ownership or licensing disputes are concerned because of fear on infringement actions in the event that ownership is awarded to an opponent where the industrial design was already commercially exploited.

In addition, the quality and competencies of appointees may be brought to question owing either to the undisclosed considerations of the Minster in making appointments or to the general repulsion of highly qualified and competent professionals from appointment owing to the job insecurity attached thereto.

5.2.2 Organization and qualifications of tribunal members

The chairman of the Tribunal should be a person who has been a judge or who is qualified to be appointed as a judge of the High Court of Kenya.

At least two members of the Tribunal should be persons who have, for not less than seven years, been qualified and entitled to practice as advocates in Kenya and the other two members must have experience and/or expertise in industrial, scientific and technological fields.

Ex facie, the law does not place express requirements on a proven track record in Intellectual Property matters although the Tribunal has powers under Section 116 of the IPA to request expert technical advice in making any ruling. Yet, this fact coupled with the political undertones in appointments may undermine its competencies and which in practice may be a cause for negative public perceptions by rights holders and which in turn translates to very poor enforcement of IPR’s

The sittings of the tribunal are discretionary as it sits at such times as it may appoint. In practice the IPT Tribunal’s sittings are not as frequent and consistent as they should be. There is no known calendar of sittings of the Tribunal and neither does the Tribunal have a fully equipped and functional registry that administers matters before it. Instead the Tribunal operates with a secretary who must be a legal officer and who therefore administers the Tribunal’s matters. The discretion to decide when to sit coupled with the fact the members are not employed on a full time basis greatly affects their capacity and commitment to the proper functioning of the Tribunal and this in turn impacts on the quality of rulings and decisions of the IPT Tribunal. While this may not be blamed on Tribunal members, it is not lost to critics that they (tribunal members) do not strive to provide the utmost value for the limited time and finance allocation provided to them and this is very easily confirmed by the time allocation during Tribunal hearings to counsel representing IP rights holders during hearings presumably because tribunal members have other personal matters to attend to.

Finally in terms of organization, out of the 47 counties in Kenya, the IPT only sits in Nairobi County, the capital city of Kenya. This means that any person desiring to litigate before it in any other part of the country must travel to the city. Obviously, the cost implications of this are high not to mention the low incentive to enforce IPR’s

5.2.3 Terms and period of service of tribunal members

The chairman and every member appointed under the IPA holds office for a period of three years and is eligible for re-appointment.[116]

A member shall cease to hold office if: -

                                                              i.      the Minister removes him from office on the grounds that he is incapacitated by mental or physical illness or is otherwise unable or unfit to discharge the functions of a member or is unable to continue as a member;

                                                            ii.      he delivers to the Minister a written resignation of his appointment;

                                                          iii.      he has been absent from three consecutive meetings of the Tribunal without leave or good cause;

                                                          iv.      he is adjudged bankrupt or enters into a scheme of composition or a scheme of arrangement with his creditors;

                                                            v.      he is sentenced by a Court to imprisonment for a term of six months or more; or

                                                          vi.      He is convicted of an offence involving dishonesty, fraud or moral turpitude.[117]

Firstly, the period of service of the chairman and Tribunal members does not encourage the development of a strong judicial tradition at the Tribunal. In practice the period of 3 years coupled with the history of whimsical terminations by successive Ministers of government disrupts the consistent development of the traditions of the Tribunal and any meaningful policies and long term plans that may have been put in place by incumbent members are often jeopardized by these insecurities. Although the law makes provision for re-appointment, these are never guaranteed and therefore these inconsistencies prove to be quite costly as every successive Tribunal seeks to re-invent the wheels.

Secondly, the terms of service of the members of the IPT Tribunal are decided by the appointing Minister. While in practice it may be that this is a subject of negotiation between the relevant ministries and short listed candidates for appointment, the Ministry can only offer so much remuneration and benefits to Tribunal members because the Ministry is itself dependent on the exchequer for funding. This in turn affects the competencies of the Tribunal because the calibre of persons who would be expected to hold those positions shy away due to poor terms of service.

5.2.4 Resource allocation to the IPT Tribunal

The operations of the Tribunal are funded partly by the Kenya Industrial Property institute (KIPI) and the Ministry of Industrialization. It is worth noting that the financial year of the institute happens to fall on 30^th June of every year when the national budget is usually read.

According to Section 16 (1) of the IPA, the funds of the Institute comprise of -

(a) Such sums as may be granted to the Institute by the Minister out of monies provided by Parliament for that purpose, towards the expenditure incurred by the Institute in the exercise of its powers or the performance of its functions under the IPA.

(b) Such monies or assets as may accrue to or vest in the Institute in the course of the exercise of its powers or the performance of its functions under this Act or under any other written law e.g. official fees

(c) All monies from any other source provided for or donated or lent to the Institute.

 
From the foregoing it is clear that the institute’s sources of funding are very limited and it is still highly dependent on the exchequer to fund its activities. In a developing country such as Kenya, Intellectual Property rights are usually at the bottom of the government’s budgetary priorities and this is reflected in the resource allocations to the institute.

It should also be noted that every year, the Board of Directors of KIPI has to provide revenue and expenditure estimates for the next financial year for approval by the Minister.

Basically, the resource allocations to the institute directly impact on the overall performance of the institute and the IPT in terms of quality and efficiency of service delivery and hence enforcement of Intellectual Property rights in Kenya.

5.2.5 Law reporting system of the tribunals

Basically, the IPT does not have a law reporting system for case decided by it. Contrast this with the Judiciary which boasts of a vibrant National Council for Law Reporting (Kenya), which is a public body established under the National Council for Law Reporting Act No. 11 of 1994 and charged with the responsibility of publishing the judicial opinions of the superior Courts of record in the official law reports of the Republic of Kenya and related publications.

The lack of a systemic law reporting system mainly hinges on the poor resource allocation to the institute (see 5.1.4 above) and negatively impacts on the certainty of the law and affects the confidence of litigants who litigate before it. The benefits of a proper law reporting system cannot be gainsaid as it ensures the impartiality and transparency of judicial officers vide the common law principle of stare decisis et non quieta movere and ensures the evolution of jurisprudence.

However in addition to the challenges discussed above, the IPT is unable to be consistent in its traditions and rulings in a way that is efficient and professional. This directly impacts on the confidence of litigants, the costs of litigation and the general development if IP law in Kenya. Currently in order to obtain copies of decided cases of the Tribunal, a party has to formally apply to the Tribunal for copies at a fee. Clearly, as every advocate would be aware, this state of affairs may not be favourable for urgent situations when a precedent would be required for an urgent application like an injunction to stop an imminent or ongoing infringement.

5.2.6 Public ignorance

Most members of the public in Kenya are yet to fully grasp the economic benefits of Intellectual Property rights. They are therefore obviously unable to enforce that which they have no knowledge of. For that reason, the statistics of litigants at the IPT show that a large majority are foreign nationals who armed with the knowledge of territoriality of IPR’s file for protection of their inventions and innovations in the country. The vast majority of locals are large industrial firms and rarely do individual persons in Kenya litigate before the IPT.

While it is impossible at this stage to put a finger on the exact reasons why the public is ignorant about IPR’s, the cheap cost of filing for protection of IP and of filing suit before the IPT for locals in Kenya reinforces the argument that either the public is ignorant or not just interested in IP generally.

5.3.0 The Registrar of Trademarks

5.3.1 Terms of service of the Registrar

The Managing Director appointed under Section 11 (1) of the IPA also doubles up as the Registrar of Trademarks (the ‘Registrar’). The Registrar is assisted in discharging his duties under the TMA by a deputy Registrar and assistant Registrars who must be advocates of seven years practice in Intellectual Property matters. Currently, there are only two persons who hold the office of assistant Registrar in Kenya. This brings the Total of Registrars in Kenya to 3.

Considering the large volumes of Trademarks disputes within the Tribunal’s jurisdiction vis-à-vis the number of Registrars, the efficiency, quality and speed of service delivery is greatly compromised. The Registrar’s can only hear so many cases at a time in a day.

Furthermore, the Registrar’s time has to be split between his administrative duties as Managing Director of KIPI and as the Trade Marks Registrar. This is a sure recipe for inefficiency and may lead to neglect of responsibilities at the Trademarks Registry.

Basically, the challenges that affect the IPT in terms of resource allocation, law reporting system and public ignorance are similar as both the IPT and the Registrar operate under the auspices of KIPI. Please refer Paragraphs 5.2.4, 5.2.5 and 5.2.6 above for discussion on these.

5.4.0 The Seeds and plants variety Tribunal

5.4.1 Methods and procedures of appointment and removal of tribunal members

As discussed above, according to the sixth schedule of the SPVA, the Minister for Agriculture is the one mandated to appoint a chairman for the Tribunal who must be an advocate. The chairman serves for a term that the Minister may specify in the instrument of appointment, and if the Minister is satisfied that the chairman is unfit to continue in office or incapable of discharging his duties, he may revoke the appointment of the chairman. Plainly put, the tribunal members serve at the pleasure of the Minister of Agriculture. Like in the IPT, the period of 3 years coupled with the history of whimsical terminations by successive Ministers of government in other IPR Tribunals disrupts the consistent development of the traditions of the Tribunal and any meaningful policies and long term plans of the tribunal.

Secondly, even though the Seeds and Plant Varieties Act was enacted into law in 2001, Section 28(1) of the Act was operationalized in 2006 when the first Tribunal was appointed by the Minister for Agriculture. This basically means that for 6 years after the relevant law was enacted, persons with disputes on Plant Breeders Rights either had no forum to ventilate their issues or had to file suit in mainstream Courts. Considering the technical and scientific issues involved in plant breeder’s rights, it goes without saying that the economic costs of the vacuum were immense and will be reflected in the sector for quite some time to come. In addition, foreign direct investment in plant variety innovations and development has been greatly affected because investors lack confidence in the protection and enforcement system as is at the moment.

Thirdly, since the operationalization of the SPV Tribunal in 2007, the Tribunal is still faced with legal challenges on its procedure because the previous Chief Justice of Kenya vacated office without approving their rules of procedure and thereby frustrating the operations of the Tribunal. To date the said rules are yet to be approved by the current chief Justice and this has caused a huge backlog of cases at the Tribunal involving Plant Breeders Rights

5.4.2 Resource allocation to the IPT Tribunal

According to the secretary to the Tribunal, the SPV Tribunal, like the IPT is not autonomous and depends on the Ministry of Agriculture for funding. This greatly affects its plans and long term organisational and administrative objectives because all these have to be approved by the Ministry for funding.

Finally, although the SPV Tribunal is yet to be fully operational, the challenges that affect the IPT in terms of law reporting system and public ignorance are bound to be similar. Please refer Paragraphs 5.1.5 and 5.1.6 above for discussion on these.

5.5.0 The Competent Authority

The Competent Authority was also just recently in 2008 set up by the Attorney General. Its members comprise of highly qualified legal practitioners and scholars in Intellectual Property law. However, the authority is yet to commence its sittings.

According to an official from the Kenya Copyright Board, the authority has never adjudicated on a dispute and has to date only received 5 cases which are pending for its decision. This could either mean, which is highly unlikely, that there are no disputes for adjudication or, which is very likely, that rights holders have no information of its existence.

Generally, the mandate of the authority is very narrow and mainly touches on disputes involving collective societies which can only be ventilated at the appellate stage.

Finally, questions are bound to arise as to the impartiality and independence of the authority as it shares the same office space and facilities with the Kenya Copyright board whose decisions it is supposed to review. This may not inspire confidence in aggrieved persons