mardi, novembre 23, 2010

Kenya: Towards Community IP rights protection: the East African Common Market Protocol

Towards Community IP rights protection: the East African Common Market Protocol

Contributed by Njoroge Regeru & Company

 

Introduction
Article 43 and cooperation in IP matters
Common market principles
Implications


Introduction

The Protocol on the Establishment of the East African Community Common Market was established pursuant to Articles 76 and 104 of the Treaty for the Establishment of the East African Community. The common market became operational on July 1 2010.

The protocol establishes the East African Common Market among the member states of the East African Community (EAC) (Tanzania, Kenya, Burundi, Uganda and Rwanda) to form an integral part of the community. It is hoped that by establishing the common market, EAC member states will enjoy accelerated economic growth and development. Further, it is expected that the common market will widen and deepen economic and social cooperation among the member states.

Articles 5(3)(k) and 43 of the protocol require member states to cooperate in the area of IP rights.

Article 43 and cooperation in IP matters

Article 43 calls for member states to cooperate in the field of intellectual property by promoting and protecting creativity and innovation for economic social and cultural development in the community. The areas for cooperation include:

·                          copyrights and related rights;

·                          patents;

·                          layout designs of integrated circuits;

·                          industrial designs;

·                          new plant varieties;

·                          geographical indications;

·                          trade and service marks;

·                          trade secrets;

·                          utility models;

·                          traditional knowledge;

·                          genetic resources;

·                          traditional cultural expressions and folklore; and

·                          other areas to be determined by the member states.

It is expected that member states will establish measures to prevent infringement, misuse and abuse of intellectual property and set up mechanisms to fight piracy and counterfeiting activities at EAC level. Member states are also enjoined to promote public awareness of IP matters.

The East African Community aims to establish mechanisms to protect traditional cultural expression, traditional knowledge and national heritage. This is an important aim, given the problems recently experienced by members of the community in protecting certain aspects of their traditional and cultural intellectual property. For example, in recent years Kenya has lost the trademark rights to its traditional kiondo basket designs and is at risk of losing the rights to its traditional kikoi fabric designs. It remains for the EAC Council to issue directives on the administration, management and enforcement of IP rights in the spirit of the protocol.

Common market principles

The standardisation of the treatment of IP matters is fundamental to a common market in which goods and services can move freely. Article 43 is therefore a milestone towards achieving uniform IP rights protection across the EAC.

Under the existing regime, individuals and organisations in member states seeking to protect their IP rights across the community are forced to apply for protection with the relevant IP offices in all member states, or else use the African Regional Intellectual Property Organisation (ARIPO) or Patent Cooperation Treaty (PCT) systems, which often prove inconvenient and costly, or entail logistical problems.

It is hoped that the new directives will create an IP protection system that allows trademarks, copyrights and patents to have effect throughout the community and to be obtained through a central EAC IP office (or an office as designated by the council or through member states IP offices). This is important, as it will ensure the smooth running of the common market and encourage the free movement of goods and free competition.

Implications

IP rights in Kenya are mainly governed by the Trademarks Act (Cap 506 Laws of Kenya), the Industrial Property Act 2001 and the Copyright Act 2001. These laws also make provision for the protection of intellectual property under the Madrid and ARIPO systems. The issue of EAC directives on IP rights would therefore lead to an amendment of these major statutes.

Many commentators are concerned about the fact that the introduction of a new system of IP protection will lead to the coexistence of a number of protection systems in Kenya (ie, protection at national level, through the PCT and ARIPO systems, as well as the proposed EAC IP rights protection system). However, this could be seen as an advantage, as rights owners will be in a position to opt for the most cost-effective mode of registration.

Furthermore, as the EAC-wide system is put into place, issues such as priority dates will require addressing. Once the directives are in force, will rights holders be able to claim priority for their IP rights from the date of registration in Kenya or registration in the community as a whole? Issues of conversion from national to EAC-level protection will also have to be dealt with.

Confusion may also arise with regard to trademarks, especially where similar marks have been registered in different member states by different entities. The result may be that an entity wishing to register certain IP rights will have to perform both a nationwide and an EAC-wide search to ensure that no similar marks have already been registered.

Once the directives have been issued, Kenya will also have to consider how to deal with infringements of the new law. In this regard, the relevant legislation will need to be amended so that infringement actions and subsequent appeals can be brought both in Kenya or in other member states in courts specifically designated to hear EAC IP matters.

EAC-wide cooperation in the area of IP rights will afford Kenyan entities a cost-effective means of attaining protection for their goods and services across the East African Community and afford IP rights holders uniform rights which will apply in all EAC member states.

For further information on this topic please contact
Anthony Gakuru at Njoroge Regeru & Company by telephone (+254 20 271 8482), fax (+254 20 271 8485) or email (info@njorogeregeru.com).