The Anti-counterfeit (Recordation) Regulations, Legal Notice no. 118 of 2021

1. These regulations may be cited as the Anti-Counterfeit Citation. (Recordation) Regulations, 2021.

2. In these Regulations, unless the context otherwise requires— Interpretation. "Act" means the Anti-Counterfeit Act, 2008; No. 13 of 2008. "agent" means a person duly appointed to act on behalf of an intellectual property right owner, and includes a licensee; "application" means an application made to the Executive Director under the Act; "certificate of registration" means a certificate relating to protection of intellectual property rights issued under any written law; "copies" means copies of any document issued under the Act or these Regulations; "Executive Director" means the Executive Director of the Authority appointed under section 10 of the Act; "raw materials" means items used as ingredients in the manufacture of goods; and "registrant" means the owner of an intellectual property right who has recorded the same with the Authority and includes its authorized agent or licensee or assignee.

3. (1) Pursuant to section 34B(3) of the Act, an application to Application for record an intellectual property right relating to goods to be imported recordation. into Kenya shall be made by the owner of the intellectual property in the Form ACA1B set out in the First Schedule and accompanied by the fee specified in the Second Schedule to these Regulations. (2) Within thirty days of receipt of the application under paragraph (1), the Authority shall, in writing and pursuant to section 34B (2) of the Act, notify the applicant of the approval or denial of the application. (3) Notwithstanding the provisions of these Regulations, it shall be the responsibility of any person seeking to import goods for commercial purposes to ensure that the intellectual property right relating to the good recorded. 812 Kenya Subsidiary Legislation, 2021

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

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

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

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

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

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

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

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

12. (1) The owner of an intellectual property right may appoint Appointment of agents. an agent to act on his behalf in the recordation of an intellectual property rights or any procedure related thereto. (2) An intellectual property rights owner who ordinarily resides outside Kenya or has a principal place of business outside Kenya may be represented by an agent in recordation of an intellectual property rights. Kenya Subsidiary Legislation, 2021 813 (3) The appointment of an agent in the recordation of an intellectual property shall be conducted in accordance with the provisions relation to appointment of an agent under the Anti- Counterfeit Regulations, 2010. L.N. 126 of 2010.

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

14. (1) The forms specified in the First Schedule to these Fonns. Regulations shall, with such modifications, be used for the purpose indicated therein. (2) Notwithstanding the provision of these Regulations, a document which deviates from the specified form shall not be void by reason of the deviation which does not affect the substance of the document, unless it is calculated to mislead or deceive in which case regulation 13 shall apply. 814 Kenya Subsidiary Legislation, 2021

FIRST SCHEDULE FORMS FORM ACA 1B (r. 3(1)) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority APPLICATION TO RECORD INTELLECTUAL PROPERTY RIGHTS The Executive Director, The Anti-Counterfeit Authority 1 Name of the owner of the intellectual property right 2 Telephone number, postal and physical address of owner 3 Details of the intellectual property rights owner or partners of the association 4 Name of agent or local distributor if any 5 Telephone number, postal and physical address of agent or local distributor 6 Sample or photographic representation of the protected goods 7 Name and address of each foreign person or business entity authorized or licensed to use the intellectual property right 8 The identity of any parent or subsidiary company or other foreign company under common ownership or control which uses the intellectual property right abroad 9 Place of manufacture of goods bearing the recorded trade mark 11 Remarks Dated this day of 20 Name of Applicant Signature For official use only THIS APPLICATION IS APPROVED/NOT APPROVED EXECUTIVE DIRECTOR NOTES: 3. If space provided is not sufficient, please use a separate sheet of paper 4. This application shall be accompanied by a copy of the certificate of registration certified by the registering authority showing title to be presently in the name of the Applicant; 5. The application shall also be accompanied by a fee set out in the Second Schedule to the Act. Kenya Subsidiary Legislation, 2021 815 FORM ACA 2B (r. 4) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority INTELLECTUAL PROPERTY RIGHT PARTICULARS FOR IMPORTED GOODS The Executive Director, The Anti-Counterfeit Authority 1. Name and address of 2. Name and address of 3. Name and address of exporter/consignor importer/consignee agent 4. Shipment mode (sea, air, 5. Country of Origin 6. Port of Destination etc.) Declared Product Quantity Unit of Brand Name And ACA Remarks HS Code Description Measure Name Address of Recordati Owner of on Intellectual Reference Property Right Number 1 2 3 4 5 6 7 8 9 10 Dated this day of 20 Name Signature NOTES: 1. If space provided is not sufficient, please use a separate sheet of paper 2. This Form shall be accompanied by certified copies of certificates of registration of the intellectual property rights or information which furnishes authorship or creation. 816 Kenya Subsidiary Legislation, 2021 FORM ACA 3B (r. 5(1)) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority APPLICATION TO CONTINUE RECORDATION ON CHANGE OF OWNERSHIP The Executive Director, The Anti-Counterfeit Authority I. Name of the new owner of the intellectual property right. 2 Telephone number, postal and physical address of the new owner of the intellectual property right. 3. Name, telephone number, postal and physical address of the previous owner of the intellectual property right. 4. Effective date of the change of ownership. 5. Description of the time limit, if any, of the rights transferred. 6. Remarks Dated this day of 20 Name of Applicant .Signature For official use only: THIS APPLICATION IS APPROVED/NOT APPROVED EXECUTIVE DIRECTOR Notes: 1. If space provided is not sufficient, please use a separate sheet of paper 2. This Form shall be completed and filed with the Authority in quadruplicate. 3. This application shall be accompanied by a certified copy of the certificate of registration and the prescribed fees. Kenya Subsidiary Legislation, 2021 817 FORM ACA 4B (r. 5(2)) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority NOTICE OF DISCONTINUATION OF RECORDATION The Executive Director, The Anti-Counterfeit Authority NAIROBI This is to notify you that (indicate name of the proprietor of the recorded intellectual property right) holder of recordation number has with effect from the date of this notice discontinued the said recordation. Dated at Nairobi this day of 20 Name of Proprietor of the Intellectual Property Right) Note: The form shall be signed by an authorized officer or agent or representative of the registrant. FORM ACA 5B (r. 6) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority NOTICE OF CHANGE OF NAME The Executive Director, The Anti-Counterfeit Authority NAIROBI This is to notify you that (indicate name of the proprietor of the recorded intellectual property rights holder) has with effect from (indicate the date, month and year) changed its name to (indicate the new name). Dated at Nairobi this day of 20 (Name of Proprietor of the Intellectual Property Right) Note: 1. This form shall be accompanied by a certified copy of the certificate of registration showing title in the new name and the prescribed fees. 2. The form shall be signed by an authorized officer or agent or representative of the proprietor. 818 Kenya Subsidiary Legislation, 2021 FORM ACA 6B (r. 7) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority APPLICATION FOR RENEWAL OF RECORDATION OF INTELLECTUAL PROPERTY RIGHT The Executive Director, The Anti-Counterfeit Authority 1 Current recordation reference number 2 Name of the owner of the intellectual property 3 Telephone number, postal and physical address of owner 4 Name of agent or local distributor if any 5 Telephone number, postal and physical address of agent 6 Description of the recorded intellectual property right 7 Validity and subsistence of the trademark intellectual property 8 Remarks Dated this day of 20 Name Signature NOTES: 1. If space provided is not sufficient, please use a separate sheet of paper 2. This Form shall be accompanied by; (a) a status copy of the certificate of registration certified by the registering authority showing the title to be in the name of the Applicant; (b) a statement describing any change of ownership or in the name of the owner and any change of addresses of the owners and places of manufacture; (c) a fee as prescribed in the Second Schedule to the Act. Kenya Subsidiary Legislation, 2021 819 FORM ACA 7B (r. 10) ANTI-COUNTERFEIT ACT, 2008 Anti-Counterfeit Authority APPLICATION FOR OFFICIAL SEARCH Executive Director Anti-Counterfeit Authority NAIROBI Kindly supply the undersigned with details of the following recorded intellectual property right: Nature of Intellectual Property Right Name of proprietor Nationality of Proprietor Postal Address of Proprietor Physical Address of the Proprietor Local Agent of Proprietor, if any Date of Recordation APPLICANT FORM ACA 8B (r. 11) THE ANTI-COUNTERFEIT ACT, 2008 The Anti-Counterfeit Authority APPLICATION FOR COPIES OF DOCUMENTS The Executive Director, The Anti-Counterfeit Authority I Name of the applicant 2 Telephone number, postal and physical address of the applicant 3 Record Number 4 Reason(s) for seeking copies 5 Remarks Dated this day of , 20 Signature OWNER/AGENT 820 Kenya Subsidiary Legislation, 2021

SECOND SCHEDULE FEES (r.3; r.4; r.5; r.6; r.7; r.10; r.11) No. Forms Purpose Amount (United States Dollars) 1 FORM ACA 1B Application to Record intellectual 90 for the first class, property rights 10 for each subsequent class 2 FORM ACA 2B Submission of Particulars of 20 Imported Goods 3 FORM ACA 3B Change of ownership 20 4 FORM ACA 5B Change of Name 20 5 FORM ACA 6B Renewal of Recordation 50 6 FORM ACA 7B Application for Search 5 7 FORM ACA 8B Application for copies 0.5 per page Made on the 30th June, 2021. BETTY MAINA, Cabinet Secretary, Ministry of Industrialization, Trade and Enterprise Development. PRINTED AND PUBLISHED BY THE GOVERNMENT PRINTER, NAIROBI