Find out what you need to know to get started and progress your intellectual property (IP) journey including tips on taking your idea to market in Kenya and abroad.

The type of property that is familiar to most people comprises physical objects. People own clothes, cars, houses and land. Intellectual Property (IP), on the other hand, is the product of someone's mental efforts.

Thus an individual's creativity and innovation can be owned in much the same way that they can own physical property. National and International laws and conventions recognize the product of a person's mental efforts as an Intellectual Property right (IPR)

IP is all around us. Every product or service that we use in our daily lives is usually the result of a long chain of big or small innovations, such as changes in designs, or improvements that make a product look or function the way it does today. Regardless of what product an enterprise makes or what services it provides, it is likely that it already has or is regularly using and creating a great deal of IP. For example, almost every business enterprise in Kenya has a trade name and may have one or more brands and should consider protecting them under the Kenyan law as trademarks. Many will develop creative original designs. Many will have produced, or assisted in the publication, dissemination or retailing of a copyrighted work. Some may have invented or improved a product or service.

Some forms of IP require formal application and examination before you can claim a right to ownership. Others, such as copyright, do not.

So applying for an IP right to protect your idea can be critical if you want to build a business and establish your presence in the Kenyan market. It is also important to understand the different types of IP and the advantages of each.

Types Of IP

The main intellectual property rights cover a number of areas, including Patents for Inventions, Trade Marks, Industrial Designs and Copyright.

  • Patents

  • concerned with inventions producing a technical result - of new and improved products, processes and uses that are capable of industrial application.

  • Copyright

  • concerned with original literary works such as novels, poems and plays, musical and artistic works such as musical compositions, sound recordings and TV and radio broadcasts, software, multimedia films, drawings, maps, charts, plans, paintings, photographs and sculptures and works of architecture.

    Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs.

    It should also be noted that intellectual property also encompasses such areas as know- how, trade secrets, protection of plant varieties etc. It is often the case that more than one type of intellectual property right can be applied to the same creation.

  • Trade Marks

  • Are concerned with brand identity - principally of goods and services. They can be distinctive words, signs or other features, the purpose of which is to make a distinction in the mind of a customer between different traders, products and services. An individual, a company, a partnership, a society, a co-operative or any lawful association can apply for a trade mark provided they meet the requirements of the Trade Marks Act. In order for a trade mark (other than a certification mark) to be registrable in Kenya, under the Trade Marks Act (Cap 506) it must contain or consist of at least one of the following essential particulars:-

    • The name of a company , individual or firm , represented in a special or particular manner
    • The signature of the applicant for registration or some predecessor in his business
    • An invented word or invented words;
    • A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.
    • Any other distinctive mark.
  • Designs

  • concerned with the appearance of a product - of the whole or a part of a product - features of, in particular, shape, configuration, contours, texture or materials of the product itself not dictated by functional considerations.

    According to industrial property Act 2001, an industrial design is defined as "any composition of lines or colors or any three dimensional form whether or not associated with lines or colors, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft".

    In other words an industrial design is concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament. It must be understood that an industrial design DOES NOT protect the method of construction or the function of the article.

    An application for registration of an industrial design should contain

    • A completed application form (form IP 27)
    • Two identical specimens of the design
    • Drawings, photographs or other graphic representations of the article embodying the industrial design and an indication of the kind of products for which the industrial design is to be used
    • The prescribed application fee.
    • Where the applicant is not the creator, the request must be accompanied by a statement justifying the applicant's right to the registration of the industrial design
    • A power of attorney, where the applicant is represented by an agent;

Why Protect Your IP

Nowadays, a company’s or individual’s intangible assets are often more valuable than physical assets. Intangible assets can include human capital, know-how, inventions, brands, designs and other products of intellectual creativity.

Intellectual property can be a vital ingredient in securing the commercial success of any company or individual wishing to stay ahead of the field in creating innovative new products, expanding market share and generating customer loyalty. It is very much in the interests of business to make best use of intangible assets by investigating the opportunities offered by the intellectual property system.

Intellectual Property Rights are territorial. Therefore, if you seek Kenyan protection, you will be granted protection in the Republic of Kenya only. However, further protection can be sought from relevant individual countries or, alternatively, there are International routes available also.

Which Kind of IP is Right for You

Regardless of what your business or service is, it is highly likely that one or more of the main Intellectual Property rights will be applicable.

In order to determine which IP rights are best for you, consider the following:

Almost every business will have a trade name, brand, sign or product name that can be protected with a Trade Mark.

Have you created a new product or technical process? Or technically modified an existing product? If so, you may be eligible file an application for Patent protection. Are you a jewellery, furniture or fashion designer? Perhaps you are making pottery or ornaments? Or have you simply modified or changed the APPEARANCE of an existing product… if so, then perhaps Design Protection will be applicable. If you have created website content, produced advertising material or training manuals, written a song or a book or created a work of art, you will have automatic Copyright Protection. Or maybe you have a food product with a unique process or a unique technical process which may fall under Trade Secrets.

It is not uncommon for more than one right to be applicable.

IP Infringement

Keeping competitors away from your IP is not only your right but also your responsibility. You should also respect the IP of others and only use it under certain conditions.

Enforcing Your IP

Getting IP protection means that you can ensure that the investment of resources in creating the IP can lead to economic reward and further innovation. An infringement of IP rights occurs when others unlawfully use the IPR belonging to another organization or individual. Examples of this include the unauthorized manufacturing of patented technology; the sale of counterfeit products; similar goods bearing another company's trade mark; distribution of music or film without the copyright owner's consent (pirated goods).

Obtaining IP protection can give you a competitive advantage allowing you to sell those products or services at a premium. However, having IP rights in place is meaningless unless those rights are enforced. The threat of enforcement is what allows the IP to be exploited as a commercial asset. Competitors or other third parties may still infringe on your intellectual property rights. If that happens, there are steps you can take to end the infringement.

Enforcement of IP rights is necessary in order to:

  • Preserve the legal validity of your IP rights.
  • Prevent infringement from occurring or continuing in the marketplace in order to avoid damage including loss of goodwill or reputation.
  • Seek compensation for actual damage, e.g. loss of profit, resulting from the infringement.

IP Rights owners can take court action in response to alleged infringing activity. The courts have a wide range of remedies available to them to compensate aggrieved owners. These include:

  • Damages
  • Injunctions
  • Orders to account for profits
  • Orders to seize, destroy and/or hand over infringing goods to right holders.

If you are in a position where you need take steps to enforce your Intellectual Property rights, there are a number of ways, depending on the circumstances of infringement, in which you can proceed.

Should an IP right infringement occur it is suggested that alternative mechanisms to resolve disputes are explored first and that, only when this is not a viable solution, you enforce your rights through legal proceedings by filling a complaint with relevant government agencies such as the Anti-counterfeit authority(ACA), Kenya Copyright Board(KECOBO), Kenya Industrial Property Institute (KIPI)

An initial step, particularly in the case of Trade Mark infringement, can be the issuing of a cease and desist letter drawn up by a solicitor. Due to the threat of court action if the infringement continues, in a lot of cases, this action might be sufficient to deter the infringer.

It is always advisable to seek legal assistance to determine how best to proceed and always seek professional legal advice from a solicitor or IP professional before embarking on enforcement proceedings.

Enforcement of intellectual property (IP) rights in Kenya is complex and requires careful consideration. Enforcement actions will require the legal expertise of IP professionals with relevant experience to advise and provide representation.

For more information please consult the IPRASK Helpdesk on defending and enforcing IP rights in Kenya.

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