role of aca in ip enforcement–gazette notice no. 7270 of 20 july 2018 established the inter-agency...

1PROMOTING GENUINE!1

ROLE OF ACA IN IP ENFORCEMENT

Presentation by

Dr. John Akoten, PhD

Deputy Director, ARPQA

Anti-Counterfeit Authority

IEA Forum, State of Play of IP in Kenya

Hilton Hotel, Nairobi, Tue 7 May 2019

2PROMOTING GENUINE!

1) Introduction

a) Mandate

b) Policy directive

c) Coordination and collaboration

2) Legal framework

3) Achievements

4) Challenges

Outline of Presentation

3PROMOTING GENUINE!3

VisionA Counterfeit-Free Kenya

Mission

Prohibit Counterfeiting thro’ the Promotion and

Enforcement of Intellectual Property Rights

4PROMOTING GENUINE!

Introduction

The functions of ACA are to:-

1) Enlighten and inform the public on mattersrelating to counterfeiting;

2) Combat counterfeiting trade and other dealingsin counterfeit goods;

3) Devise and promote training programs oncombating counterfeiting;

4) Coordinate with national, regional orinternational organizations involved incombating counterfeiting;

ACA’s Mandate

5PROMOTING GENUINE!

ACA’s Mandate

5) Advise the govt through the Cabinet Secretary on policies and measures concerning the necessary support, promotion and protection of intellectual property rights as well as the extent of counterfeiting;

6) Carry out inquiries, studies and research into matters relating to counterfeiting and the protection of intellectual property rights;

7) Carry out any other functions prescribed for it under any of the provisions of this Act or under any other written law; and

8) Perform any other duty that may directly or indirectly contribute to the attainment of the foregoing.

6PROMOTING GENUINE!

New Policy DirectiveA Quote from Uhuru’s Speech:Jamhuri Day Speech, 12 Dec 2017

6

• “The selfishness and corruption of some amongst us

have allowed counterfeiters and cartels to flourish at

the expense of local manufacturers. As result some

companies have gravely suffered. It’s time to say that

enough is enough: We must face and defeat these

enemies. To conquer these enemies and boost

manufacturing requires we keep a common vision, and

remain focused; and equally critical, that our workers

must remain in harmony with our employers.”

7PROMOTING GENUINE!

A Quote from Uhuru’s Speech

7

• “To protect our manufacturers and consumers from

fake detergents, fake cosmetics, fake batteries, and fake

kerosene – sham products that endanger the lives of

Kenyans – I have directed that the Kenya Revenue

Authority, and the Kenya Anti-Counterfeit

Authority, destroy counterfeits on seizure. Any public

officers found colluding to frustrate this process, will

be summarily dismissed and prosecuted.” (Jamhuri Day

2017 Presidential Speech).

8PROMOTING GENUINE!

Role of ACA

8

• Based on the broad mandate of ACA, the Authority engages with other key stakeholders to:

– Deal with the supply of counterfeit goods

– Deal with the demand for counterfeit goods

– Coordinate efforts to combat counterfeiting

– Collaborate in combating counterfeiting

• The Authority also plays a key role in the achievement of the Big 4 Agenda - manufacturing,

housing, food security and healthcare.

9PROMOTING GENUINE!

Inter-Agency Coordination

9

• Coordination of multi-agencies

– Section 22(3) of the AC Act designates other LEAs as inspectors for combatting counterfeiting.

– Gazette Notice No. 7270 of 20 July 2018 established the Inter-Agency Anti-Illicit Trade Executive Forum with two working groups.

• Enforcement WG

• Outreach WG – SDT

– Presidential directive – multi-agency enforcement coordination (Wanyama Musiambo)

10PROMOTING GENUINE!

Kenya’s Anti-Illicit Trade Coordination

Framework Model

National Anti-Illicit Trade Coordination

Centre (NATCoC)

Anti-Illicit Trade Executive Forum

(Executive Forum)

Enforcement Working Group

(Private sector and law enforcement agencies with

mandate on illicit trade)

Outreach Working Group

(Private sector and law enforcement agencies with

mandate on illicit trade)

Anti-Illicit Trade

Secretariat


Regional and International Collaboration

• ACA is also active in regional matters.

• It is collaborating with regional institutions, both in the public and private sectors.

• Regionally:-

– Anti-Counterfeit Network (ACN) Uganda

– Uganda Bureau of Standards

– Fair Competition Commission, Tanzania

– EABC, etc

• Internationally:-

– Interpol, INTA, etc


2.Legal Framework

12

• International Law

WTO-TRIPS Agreement

• Regional Laws

Protocol establishing the EAC Common Market (article 43)

EAC Customs Management Act, 2004 (s.219)

EAC Anti-Counterfeit Policy

EAC Anti-Counterfeit Bill


Legal Framework…

13

• National Laws (to deal with unfair trade practices)Kenyan Constitution: consumer rights - Art. 46;

IP - Art. 11(2)(c), 40(5), 69(1)(c)Copyright Act, 2001 - KeCoBoIndustrial Property Act, 2001 – KIPITrademarks Act, cap 506 - KIPIPharmacy & Poisons Act, cap 244 – PPBSeed and Plant Varieties Act, cap 326 – KEPHISWeights & Measures Act, cap 513 & Trade

Description Act – W&M Dept


Legal Framework…

14

• National Laws (to deal with unfair trade practices)Standards Act, cap 496Customs ActTrade Remedies ActCompetition Act Proceeds of Crime and Anti-Money Laundering

Act Consumer Protection ActAnti-Counterfeit Act, 2008Anti-Counterfeit Regulations, 2010


Definition of Counterfeiting

15

• S.2 of AC Act: “Counterfeiting” means taking the following actions without the authority of the owner of IPRs subsisting in Kenya in respect of protected goods:–

the manufacture, production, packaging, re-packaging, labelling or making, in Kenya, of any goods whereby those protected goods are imitated in such manner and to such a degree that those other good are identical or substantially similar copies of the protected goods;

The manufacture, producing or making of copies, in Kenya, in violation of an author’s rights or related rights;

– Counterfeit goods: means goods that are the result of counterfeiting and includes any means used for purposes of counterfeiting.


Inspectors Under the Anti-Counterfeit Act

16

Two categories of inspectors under the Act:

1. Appointed inspectors - S. 22 (1) empowers the ACA Board to appoint inspectors for purposes of enforcing the provisions of the Act. The Inspectors appointed by the Board have full police powers (s.22 (2) (b)) in the exercise of their duties under the Act.

2. Designated inspectors – (S. 22 (3) In addition to the appointed inspectors, the following are designated as inspectors for purposes of the Act:


Designated Inspectors

17

any member of the Anti-Counterfeit Agency Board

any public health inspector

any police officer inspectors appointed under the Standards Act

any authorized customs officer inspectors appointed under the Weights and Measures Act

any trade development officer inspectors appointed under the Copyright Act

any industrial development officer

inspectors appointed under the Food, Drugs and Chemical Substances Act

any trade mark and patent examiner

inspectors appointed under the Pharmacy and Poisons Act

any seed and plant inspector inspectors appointed under the Pest Control Products Act


Powers of Inspectors (s.23)

18

• Appointed inspectors have full police powers.

• Power to inspect or search any place, premise, vehicle or person found in these places;

• Power to terminate manufacture, production or making of counterfeit goods;

• Power to seize and detain counterfeit goods;

• Power to seize and detain any tools (machinery, equipment) used in manufacturing, production, making or packaging of those goods.

• May arrest a person without a warrant.


Offences under the Act (s.32)

19

The Act has criminalized all dealings with counterfeit goods which include the following actions: Have in possession or control, in the course of

trade, counterfeit goods. Manufacture, produce or make in the course of

trade, counterfeit goods; Sell, hire out, barter or exchange counterfeit

goods; Offer or expose for sale, hiring out, barter or

exchange counterfeit goods;


Offences…

20

Expose or exhibit for the purposes of trade counterfeit goods;

Distribute for purposes of trade or any other purpose counterfeit goods;

Import into, transit through, transship within or export from Kenya counterfeit goods;

In any other manner, dispose any counterfeit goods in the course of trade.


Offences…S32 (h-n)

21

Have in possession or control, in the course of trade, any labels, patches, stickers, etc;

Aids or abets or conspires in the commission of any offence;

Imports into Kenya any goods bearing a trademark or copyright that has not been recorded with ACA;

Import into Kenya any goods (except raw materials) that are unbranded;

Failure to declare the quantity or IPR subsisting in any goods being imported into Kenya;


Offences…S32 (h-n)

22

Falsely declare the quantity or IPR subsisting in any goods being imported into Kenya;

Import into, transit through Kenya any labels, etc with a counterfeit mark applied thereto;


Penalties under the Act (s. 35)

23

• For a first offender:

A fine of not less than 3 times the retail value of seized goods;

Up to 5 years imprisonment; or both.

• For a second and subsequent offender:

A fine of not less than 5 times the retail value of seized goods;

Up to 15 years imprisonment; or both.


Penalties under the Act…

24

• A court will consider the severity of the penalty based on (s. 35 (3)):

1) Any risk to human or animal life, health or safety or danger to property.

2) Conduct of the suspect – supply of truthful information, source of counterfeit goods, identity of persons involved; their whereabouts; channels of distribution, etc.


3. ACA’s Achievements


ACA’s Achievements - EnforcementIPR Complaints Received, Investigated & Prosecuted

38

108

206

162

205

185

252

123

85

33

98

202

159

90

148

234

90

68

13

27

36

14

39

41

29

22

35

0 50 100 150 200 250 300

2010/11

2011/12

2012/13

2013/14

2014/15

2015/16

2016/17

2017/18

2018/19 (Q1-2)

Prosecuted

Investigated

IPR Received


ACA’s Achievements - EnforcementIPR Complaints Received, Investigated &Prosecuted To-date

0

200

400

600

800

1000

1200

1400

IPR Received Investigated Prosecuted

1364

1122

256


ACA’s Achievements - EnforcementValue of Goods Seized & Destroyed (Ksh, mn)

149 167 183211

44

235

99

389

590

113

29 1 22

299

13 16

97

230

100

200

300

400

500

600

700

Seized (Kshs mn)

Destroyed (Kshs, mn)


ACA’s Achievements - EnforcementApprox Value of Goods Seized & Destroyed To-date (Ksh, mn)

2,066

612

0

500

1,000

1,500

2,000

2,500

Seized (Kshs mn) Destroyed (Kshs, mn)


ACA’s Achievements - EnforcementRRI – multi-agency operations on illicit trade

• The RRI is being led by Mr. Wanyama Musiambo, Deputy Head of Public ServiceThe operation netted over Kshs 8.5 billion worth of illicit goods

Goods worth Kshs 1.5 billion were destroyed in late 2017


ACA’s Achievements…Education and Public Awareness

1) Capacity building program

Targeting border or inland institutions

LEAs, judiciary, police, IPR holders (sectoral)

2) Outreach/Awareness program

Consumer outreach – ASK shows, WACD, WIPD,roadshows

Educational outreach – schools, universities

County awareness program

Conferences, seminars, workshops

3) Media coverage


Consumer Purchase of Counterfeited Goods (%)

Achievements – Research

70% of consumers

purchased counterfeit

goods.

19% of these

purchased counterfeit

goods knowingly,

while 81% purchased

counterfeit goods

unknowingly.


Reasons for Purchasing Counterfeited Goods

Achievements – Research…


79.7

64.1 62.5

2.7

66.61

9.63 8.142.16

0

10

20

30

40

50

60

70

80

90

Electronics Pharmaceuticaland cosmetics

Alcohol, beverage& cigarettes

Stationery

%

o

f

c

o

n

s

u

m

e

r

s

2010

2014

Most Counterfeited Goods – Consumers Perspective (%)



Level of Counterfeiting and Public Awareness (%)


0

10

20

30

40

50

60

70

Y 2015 Y 2016 Y 2017

22.9 23.86

15.6

51.35 52.39

61.68

Level of counterfeiting

Level of public awareness


5. Challenges

1) Long and porous borders

2) Corruption and unethical behaviour

3) Globalization and Liberalization

4) 3D technology and e-commerce – some websites are hosted outside the country

5) Weak inter-agency collaboration

6) Inadequate cooperation by IPR owners

7) Inadequate training of ACA inspectors


Challenges

8) Inadequate understanding of IP issues by some LEAs

9) Storage and destruction of counterfeit goods

10) Limited knowledge by public on issues of counterfeiting/illicit trade

11) High poverty levels, consumers’ attitude & ignorance

12) High security risks to operational staff


Our Offices

HQS , JKIA & ICD NBI: National Water Plaza, 3rd Floor, Dunga Road, Off Bunyala Road, P.O. Box 47771 – 00100 NairobiTel: 020-2280 000; 0717-430-640; 0733-951-375

Mombasa Office: Mombasa Trade Centre, Nkrumah RoadP.O. Box 41132-80100 MombasaTel: 041- 2220709

Kisumu Office: Kisumu Alpha House, 4th Floor, Room 47,P.O. Box 894 - 40100 KisumuTel: 057 - 2029929

Eldoret Office: Kiptagich Building, 3rd Floor, Uganda Road,Tel: 053 - 2030558

www.aca.go.ke | [email protected] | Twitter: @ACAkenya | Facebook: ACA Kenya

role of aca in ip enforcement–gazette notice no. 7270 of 20 july 2018 established the inter-agency...

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