Leveraging Key Resources in Kenya - International Trademark Association

On March 12, an INTA delegation composed of INTA’s Representative for Africa and the Middle East, Tat-Tienne Louembe, and local members Lorna Mbatia (CFL Advocates, Kenya), David Opijah, and Agnes Akal (Bowmans Law, Kenya) met with Elema Halake, Executive Director of the Anti-Counterfeit Agency (ACA); Dr. John Akoten, ACA Deputy Director Research, Awareness, Policy and Quality Assurance; and Johnson Adera, ACA Deputy Director Enforcement & Legal Services in Nairobi, Kenya.

During the meeting, INTA and ACA discussed ACA’s leading role in promoting IP rights and protecting local and international trademarks as a way to leverage key resources at the national and international levels. ACA reiterated its willingness to curb the flow of counterfeit goods and to partner with strategic stakeholders such as INTA. Mr. Halake said that ACA’s mandate is aligned with the government’s “Big Four Agenda” to protect consumers and boost manufacturing through the creation of 1.3 million jobs in this sector by 2022. After presenting recent activities undertaken by ACA, the Executive Director emphasized the importance of promoting interagency collaboration in the fight against counterfeits.

In line with INTA’s 2018 – 2021 Strategic Plan, Mr. Louembe expressed the Association’s willingness to share best practices with ACA and to develop joint activities. He further praised the Agency’s commitment to facilitate trade and engage with brand owners.

In addition to engaging with ACA, Mr. Louembe met with key officials at the National Assembly, Attorney General Office & Department of Justice, and the Ministry of Foreign Affairs and International Trade. Mr. Louembe also recently engaged with European Union officials, local private sector entities, and Kenyan members.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

In March, the Chinese government announced a massive restructuring of IP-related ministries. INTA members, including the China Global Advisory Council, have been actively monitoring the situation and will keep the Association updated as more details emerge. Under the changes, the China Trademark Office (CTMO) and Trademark Review and Adjudication Board will be shifted to the State Intellectual Property Office from their current location under the State Administration of Industry and Commerce (SAIC). The new IP Office and enforcement matters, such as those taken up by local AICs, will be consolidated into a new National Market Supervision and Administration Bureau, which will also include enforcement matters from other ministries, including geographical indications (GIs).

Throughout this major reorganization of Chinese government, INTA has been continuing to advocate for brand owners on priority policy issues.

On March 26, INTA and the China Trademark Association co-hosted a closed-door roundtable on bad faith trademark registration in the fashion industry. Representatives from the Council of Fashion Designers of America shared the results of a recent research report on experiences with bad faith registration. As INTA members are aware, this is a global issue that consumes the time and resources of brand owners.

INTA’s Trademark Office Practices Committee-China Subcommittee Chair, Shirley Fu (Sanyou IP, China), delivered INTA’s position on the issue based on a 2008 Board Resolution. Ms. Fu also included other possible solutions for bad faith trademark registrations in China, including added deterrence for pirates, such as civil liability, shifting the burden of proof, creating a blacklist of known pirates, consolidation of related cases, and implementing bond requirements in certain circumstances. INTA also noted that existing provisions against bad faith in the China Trademark Act could be applied more aggressively and consistently. INTA also considered options such as providing greater transparency in access to opposing party arguments, and publication of decisions by the CTMO and courts. Model cases on the matter should also be publicized more frequently.

On March 27, INTA coordinated with IP attachés from seven foreign embassies located in Beijing and shared information on the issues around bad faith registration.

Online counterfeiting is a major police priority for INTA in China. To address this issue and work with industry partners, INTA staff and members attended the “WeChat Brand Protection Conference” in Guangzhou on March 13. INTA has been promoting the adoption of the new best practices described in the paper entitled, “Addressing the Sale of Counterfeit Goods on the Internet.” This includes several provisions for social media platforms such as WeChat.

At the conference, INTA learned that WeChat reviewed more than 75,000 IP rights‒related complaints last year, and registered more than 400 trademarks from 180 brand owners for protection on its platform.

China Events at the Annual Meeting

As the Annual Meeting will soon be upon us, INTA’s China Representative Office has been undertaking various activities to engage members and government officials participating in the world’s largest gathering of trademark professionals.

INTA hosted its first Pre‒Annual Meeting Reception in Shanghai on March 16. Supported by the Dongfang Intellectual Property Club, the reception included a roundtable titled, “Trademark Risk Control: A Competitive Environment.”

A second Pre‒Annual Meeting Reception was held in Beijing on March 22, supported by INTA member law firm Unitalen. Members from greater China were invited to join this signature event held at the W Hotel.

INTA’s China Office is also coordinating interest from Chinese government officials in joining the Annual Meeting in Seattle. Currently, officials from the CTMO and the Supreme People’s Court have agreed to join public sessions and committee meetings. Also, representatives from the Economic Crimes Investigation Department of the Ministry of Public Security have expressed interest in INTA’s anticounterfeiting education activity.

Should you have any enquiries or requests, please do not hesitate to contact Seth Hays at [email protected], or Vicky Dai at [email protected].