WORLD TRADE  
ORGANIZATION   
IP/Q/KEN/1 
IP/Q2/KEN/1 
IP/Q3/KEN/1 
IP/Q4/KEN/1 
7 May 2004 
 (04-2020) 
Council for Trade-Related Aspects of Intellectual Property Rights Original:  English 
 
 
  
REVIEW OF LEGISLATION 
 
KENYA
1 
 
 
 The present document reproduces the introductory statement made by the delegation of Kenya, the questions put to it and the responses give n in connection with the review of legislation 
undertaken at the Council's meeting of 18 to 22 June 2001.
2 
 
_______________ 
 
 
I. INTRODUCTORY STATEMENT 
A. INTRODUCTION  
Kenya has had intellectual property legislation as far back as 1913.  By 1913, the Trade 
Marks Registration Ordinance was in force followed by the Patent Registration Ordinance in 1914, 
the Copy Rights Act, Cap 130, in 1966 and the Seeds and Plant Varieties Act in 1972.  
During the period 1913 to 1995, Kenya continued to amend and update its Intellectual 
Property Legislation in line with national, regional and international developments in the field of 
Intellectual Property.  
For the purposes of proper and effective coordi nation of intellectual property issues, Kenya 
established the following institutions to administer the various aspects of intellectual property rights: 
 
(1) The Kenya Industrial Property Office whic h administers trade and services marks, 
patents, utility models industrial designs and contractual agreements and licences on 
transfer of technology; 
 (2) The Copyright Office to administer copyright matters;  and 
 
(3) The Kenya Plant Health Inspectorat e Services (KEPHIS) which deals, inter alia , with 
the protection of plant breeders rights. 
 
Following Kenya's accession to or ratification of regional and international treaties, the 
country has continued to amend, revise and update its intellectual property legislation in order to 
conform with the provisions of such treaties, and in  this particular case, to the TRIPS Agreement. 
                                                      
1 As regards laws and regulations notified by Kenya u nder Article 63.2 of the Agreement, reference is 
made to documents IP/N/1/KEN/1 and 2, IP/N/1 /KEN/C/1, IP/N/1/KEN/I/1, IP/N/1/KEN/P/1 and 
IP/N/1/KEN/T/1. 
2 The minutes of this meeting have been circulated as document IP/C/M/32. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 2 
 
 
In accordance with the provisions of Article 63. 2 and following the expiry of the transitional 
period provided for in Article 65.2, Kenya is now in a position to have its laws relating to intellectual 
property reviewed by this Council.  
For Kenya to conform to its obligations unde r the provision of the TRIPS Agreement on 
patents and industrial designs, it has drafted a b ill, the Industrial Property Bill, 2001, which was 
passed by Parliament on 13 June, 2001 and now awaits presidential assent.  There is a draft to amend 
the Trade Marks Act, Cap 506, in order to comply with the provisions of the TRIPS Agreement.  The 
Copyright Bill, 2001, is now before Parliament. 
 
Kenya has also drafted bills to provide for pr otection of geographical indications and layout- 
designs of integrated circuits. 
 The aforementioned amendments and bills are aimed at strengthening the enforcement of 
intellectual property rights in Kenya. 
 Effective enforcement of intellectual property rights requires substantial investment both in 
human and institutional capacity building.  In this regard, Kenya requests its development partners to 
provide to it financial and technical support as re quired by Article 67 of the TRIPS Agreement. 
 
 Kenya would like to take this opportunity to  introduce the members of its delegation for the 
review of its national implementi ng intellectual property legislation:  Mr. Lukas O. Sese, Deputy 
Director Kenya Industrial Property Office;  Mr. J ohn E.K. Muchae, Deputy Director Kenya Industrial 
Property Office;  Dr. E.O. Sikinyi, Registrar Plan t Breeders Rights, Kenya Plant Health Inspectorate 
Services (KEPHIS);  Ms N.M. Kayaywa, Assistant Commissioner, Customs and Excise Department;  
Mrs Martha Maina, Deputy Registrar General, (c opyright);  and Dr. Wilberforce O. Wanyanga, 
Member of the Pharmacy and Poisons Board.   The Deputy Director of Kenya's Industrial Property office, Mr. Muchae, will present an overview of the Laws of Kenya that are the subject of this review.  
B. T
RADE AND SERVICE MARKS  
Kenya has had a comprehensive trademarks sy stem since 1913.  On 1 January 1957, the 
Trade Mark Ordinance was replaced  by the Trade Marks Act. Cap 506, which is identical to the 
United Kingdom Trade Marks Act of 1938.  This Act provides for registration of trademarks in Kenya.  The initial period of protection of a tr ademark is seven years and the renewal period is 
fourteen years.  As long as the renewal of a trad emark is effected regularly, such a trademark could 
remain in force indefinitely.  However, if such a tr ademark is not used for a continuous period of five 
years, any interested person can apply to have it st ruck off the Trade Marks Register on the grounds of 
non-use.  
Section 21 of the Act provides for opposition to tr ademark applications before registration.  
Any person aggrieved by the decision of the Registra r of Trade Marks may appeal to the High Court. 
 
The Act was amended by the Trade Marks (Ame ndment) Act of 1994.  This amending Act: 
 - introduced registration of service marks;  
 
- introduced registration of slogans as marks;  - introduced registration of three dimensional marks;  IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 3 
 
 
- increased penalty for falsely representing a tr ade mark as a registered trade mark from 
a fine not exceeding K Sh 500.00 to a fine not exceeding K Sh 10,000 or to a term of imprisonment not exceeding five yeas or to both; 
 
- provided for forfeiture of goods bearing forged trade marks to the Government upon 
conviction of an offence relating to forgery of trademarks; 
 - created new offences of forgery of trad e marks, aiding and abetting forgery of 
trademarks, and prohibited sale of importation of goods or performance of services 
with forged trademarks; 
 - any invoice or other document submitted or used by an importer may be produced as 
evidence in any criminal proceedings without calling the person who prepared or signed it. 
 
The Trade Marks Act provides for criminal a nd civil remedies following infringement of a 
trade or service mark.  Civil remedies include injunctions and damages if a registered trade or service mark is infringed and for passing off action for unregistered trade mark. 
 
There are draft amendments to the Trade Marks Act that will be published in the Statute Law 
Miscellaneous Amendments Bill, 2001, wh ich will contain provisions for: 
 (a) protection of well-known marks;  (b) registration of collective marks; 
 
(c) increase of a fine for forgery of a trad e mark from K Sh 10,000 to K Sh 200,000; 
 (d) putting into effect in Kenya the provision s of the Madrid Agreement and the Protocol 
as Kenya acceded to the Madrid Agreement and the Protocol in June 1998. 
 
C. P
ATENTS  
Prior to 2 February, 1990, Kenya had a patent system that was wholly dependent on the 
British Patent System.  It was only a holder of a Britis h Patent that could register the same in Kenya. 
  In 1989, the Industrial Property Act, Cap 509, was enacted.  This Act introduced: 
 
 (a) registration of original patents, industr ial designs, utility models  and technovations in 
Kenya; 
 
 (b) the Industrial Property Tribunal to he ar and determine appeals arising from the 
decision of the Director of Kenya Industrial Property Office and vetting and 
registration of technology transfer licences. 
 
The Industrial Property Bill, 2001 , is intended to repeal and replace the Industrial Property 
Act, as soon as it is enacted into law.  It was pas sed by Parliament on 13 June 2001. It is now awaiting 
the Presidential assent. 
 
The Bill has provisions that: 
 
 (i) have increased the period of protection of a patent from 17 years to 20 years; IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 4 
 
 
 (ii) have provided for grant of patents in a ll fields of technology except those that relate 
to: 
 
 - discoveries, 
 
 - scientific theories,   - mathematical methods,  
 - schemes, rules or methods for doing business, performing purely mental acts, 
or playing games, 
  - methods for treatment of the human or animal body by surgery or therapy, as 
well as diagnostic methods practised in relation thereto, 
 
  - mere presentation of information,  
 - public health related methods of use or uses of any molecule or other 
substances whatsoever used for the pr evention or treatment of a disease which 
disease may be designated by the Minister responsible for health as a serious 
health hazard or life threatening, 
  - plant varieties, and    - inventions contrary to public morality, public health and safety, principles of 
humanity and environmental conservation; 
  (iii) have removed powers from the Minister to exempt temporarily patents from 
patentability; 
  (iv) have provided a new criterion, new use, for patentability; 
 
 (v) have provided a Bolar provision;   (vi) provision for establishment of Kenya Industrial Property Institute as autonomous 
patent and trademarks office; 
 
 (vii) reversal of burden of proof  in civil infringement proceedings. 
 
The Industrial Property Act has provision fo r civil remedies and penal provisions on 
infringement of industrial property rights registrable under the Act.  Civil remedies include:  
 (a) injunctions to prevent infringement where infringement is imminent or to prohibit the 
continuation of the infringement once infringement has started; 
 
 (b) damages; or  
 (c)  any other remedy provided for in law. 
 
Any infringement of a patent is an offence punishab le by a fine. Such a fine should not be less 
than K Sh 10,000 and should not exceed K Sh 50,000 or to a term of  imprisonment not exceeding five 
years or to both. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 5 
 
 
D. NEW BILLS 
1. Geographical indications Bill, 2001 
This Bill has been based on a draft provided by  the WIPO.  It provides for protection of 
geographical indications for wines, spirits a nd other goods.  This Bill will be introduced in 
Parliament any time now. 
 
2. Layout-Designs of Integrated Circuits, Bill, 2001 
This Bill has been based on a draft provided by the WIPO. It provides for protection of 
layout-designs of integrated circuits in Kenya.  Arrangements are in place for drafting of a bill 
providing for protection of undisclosed information or trade secrets. 
 
3. Plant Breeders' Rights 
The Legislation governing the Plant Breeders Ri ghts is the Seeds and Plant Varieties Act, 
Cap. 326 that was put in place in 1972.  This was revi sed in 1977 and in 1991 to in co-operate the 
technological developments and address other issu es that emerged with time.  The implementing 
regulations for the Plant Breeders Rights were pub lished in 1995.  Consequently, the Plant Breeders 
Rights Office was established in 1997 and is admini stered by the Kenya Plant Health Inspectorate 
Service (KEPHIS).  
Kenya acceded to the UPOV 1978 Convention as the 40th member of the Union.  The Seeds 
and Plant Varieties Act provides for civil and crim inal procedures for infringement of rights.  The 
legislation is under review to further strengthen the enforcement and compliance with other national 
and international agreements.  
4. Border measures 
 With regard to the border measures, the Cu stoms and Excise Act Cap 472 was revised in 1984 
and encompasses many of the GATT (1947) rules.  After coming into force of the WTO, a further 
revision was done to bring the legislation into conformity with GATT 1994.  
The regulation of the TRIPS Agreement is covere d by sections 14 and 15 of the Act and the 
Eighth Schedule to the Customs and Excise Act.  Section 185 contains provi sions for dealing with 
offences relating to importation of restricted and prohibited goods.  To complement the enforcement 
and border measures, the IPRs Bills give a comprehe nsive coverage of the regulations.  However, to 
strengthen the enforcement and border measures a lo t of financial and technical assistance will be 
required to build requisite capacity.  5. Copyright and Related Rights 
The Copyright Act, Chapter 130 of the Laws of Ke nya is the operative law in the protection of 
copyright and related rights.  
The preamble to the said Act states that the Act makes provisions for copyright in literary, 
musical and artistic works, audio-visual works, s ound recordings and broadcasts.  The Copyright Act 
is purely declaratory.  It simply declares that the author of an original work has the right to prevent 
other persons from copying or otherwise using his wo rk without his authority.  There is therefore no 
provision for a public register of protected work s.  The Act was enacted in 1966 and has since 
undergone various amendments (namely, 1975, 1982 , 1989 and 1995) to harmonise its protection of 
copyright with the fast changing dynamics and deve lopments in the international intellectual property IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 6 
 
 regime.  The Copyright Act is currently under review  to incorporate advances in technology and to be 
TRIPS compliant.  
The Copyright Bill, 2001, has already been tabled  in Parliament.  The debate on the said bill 
is expected anytime.  The current copyright law provides for civil and criminal remedies in case of 
infringement.  
The Copyright Bill, 2001, seeks to enhance the said remedies by putting stiff penalties on 
infringers.  The Anton Piller orders, for example, are especially taken care of in the said Bill. 
 
The Copyright Bill also seeks to establish an autonomous Copyright Office which will 
enhance the administration of copyright a nd regulate capacity building for the same. 
 
II. RESPONSES TO QUESTIONS POSED BY CANADA 
A. G
ENERAL PROVISIONS  
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS 
Agreement and throughout) have been implemented. 
 
 The courts with jurisdiction over the enforcemen t of IPR are determined by the nature of the 
rights that form the subject of the action. 
 
 Under section 15(11) of the Copyright Act Cap 130 of the Laws of Kenya, the  High Court 
has jurisdiction over civil actions for the infringement of copyright and related rights.   The copyright owners and the owners of related ri ghts have the right to file civil  suits against 
the alleged infringers according to section 13 of the Co pyright Act.  The courts may at the request of 
the right-holder, order the alleged infringer to produce evidence.   Clause 37 of the Copyright Bill, 2001, before Parliament for enactment, provide for the Anton 
Piller Orders whereby a copyright owner who has prima facie evidence that his rights have been 
infringed, can get ex parte  orders from the court to secure the presentation of the alleged infringing 
articles as evidence. 
  Under section 15 of the Copyright Act, the pl aintiff is entitled to relief by way of damages, 
injunction or other relief available in any corres ponding proceedings in respect of infringement of 
other's protected rights.  He is also entitled to delivery up, to the plaintiff of any article in the 
possession of the defendant which appears to the court to  be an infringing copy or any article used or 
intended to be used for making infringing copies. 
  
 Under the provisions of the Trade Marks Act, an  owner of a registered trademark may sue for 
infringement of his mark in the High Court of Kenya .  He may apply for an injunction, and sue for 
damages.  
 
 The owner of an unregistered trademark may take a passing off action.  Under section 58 C, D, E & F criminal action may be taken against a person who forges a registered trademark.   Under section 58 C, any invoice or other docum ent submitted or used by an importer or any 
other person in connection with the importation of goods in respect of which a prosecution is brought 
under this part, may be produced in any criminal proceedings wit hout calling the person who prepared 
or signed it.  IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 7 
 
 
 The magistrate's court has jurisdiction on crim inal matters relating to trade marks.  Under 
section 58 H (1) of the Trade Marks Act, upon convicti on of any person for an offence, the court may, 
in addition to any goods in respect of or by mean s of which the offence was committed to be forfeited 
to the Government.  
 
 Section 21 of the Act provides for opposition proceedings on trademarks.  Under section 35 
of the Act any person who is aggrieved, by any en try wrongly remaining on the register may apply for 
expungement of such a trade mark.  
 Under section 110 of the Industrial Property Act,  Cap 509, an owner of a patent, utility model 
or industrial design may apply to the Industrial Property Tribunal for the following relief:  
(a) an injunction to prevent infringement wher e infringement is imminent, or to prohibit 
the continuation of the infringement  once infringement has started; 
 
(b) damages;  (c) any other remedy provided for in law. 
  Section 113 of the Act provides that any infringement of a patent constitutes an offence 
punishable by a fine not less than K Sh 10,000 and not exceeding K Sh 50,000 or by imprisonment for 
a term not less than three years and not more than five year or to both.   Under the Customs and Excise Act, Cap 472 of the laws of Kenya, section 14 and the Eighth Schedule list the goods that are prohibited or restricted imports into Kenya.  The Eighth Schedule also 
covers all goods the importation or  exportation of which is prohibited by any other law in force in 
Kenya.    Section 15 of the Customs and Excise Act empowers the Minister, to prohibit or restrict importation of any goods or class of goods save if  imported in accordance with conditions, which may 
be specified. 
 
 Goods, which have been notified as being trad e marked, patented or copyrighted, will be 
gazetted by the Minister in accordance with secti on 15 of the Customs and Excise Act.  These goods 
will then be deemed prohibited or restricted until the importer satisfies the customs authorities that they have been imported in accordance with the conditions governi ng their importation.  
 
 With regard to plant breeders' rights, under sec tion 20 (1) of the Seeds and Plant Varieties Act 
Cap 326, a holder of plant breeder's right that is infringed may institute infringement proceedings at 
the High Court for the following relief:  
(a) injunction; 
 
(b) damage; or  (c) taking of accounts. 
 
 On criminal matters, magistrate courts have ju risdiction. Under section 33 of the Act, a person 
who is guilty of infringement of a plant breeder's  right, is liable to pay a fine not exceeding 
K Sh 3,000 or to a term of imprisonment not exceeding a period of three months or to both. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 8 
 
 
2. What protection does your Copyright legislation afford to "foreign works"? 
 
 Section 18(1) of the Copyright Act, the Attorn ey General may extend the application of this 
Act to a country, which is a party to a treaty to which Kenya is also a party, and which provides for 
copyright in works to which the application of this Act extends. 
  
III. RESPONSES TO QUESTIONS POSED BY  THE EUROPEAN COMMUNITIES AND 
THEIR MEMBER STATES 
A. G
ENERAL PROVISIONS  
1. Please describe if your legislation includes measures necessary to protect public health 
and nutrition, and to promote the public interes t in sectors of vital importance to your socio-
economic and technological development as mentioned under Article 8 of the TRIPS Agreement.  If yes, please explain how such me asures are consistent with the provisions of the 
TRIPS Agreement. 
 The Industrial Property Act, 2001 provides meas ures necessary to protect public health and 
nutrition namely:   
 Section 58 (2) on parallel importation 
 Sections 72-25 on compulsory licence for commercial use 
 Section 80 on the government use for non-commercial purposes 
 
Parallel Importation 
Parallel importation provision in the Act is consistent to Article 6 of the TRIPS Agreement on 
the exhaustion of rights.  Section 58(2) states:  
"The rights under the patent shall not extend to act s in respect of articles which have been put 
on the market in Kenya or in any other country or imported into Kenya." 
 As per the draft implementing regulations of th e Industrial Property Act, the articles have to 
be put in the market by the owner of the patent or through his consent. 
 Compulsory Licence - Commercial Use 
  Sections 72-75 of the Industrial Property Ac t, 2001, published on 3 August 2001, compulsory 
licence is provided for non-working of a patent or  similar reasons such as high prices for medicine 
and on interdependence of patents.  Compulsory Licensing for Government Use 
 Section 80 of the Industrial Property Act, 2001, the Government can exploit patented 
invention by itself or by third persons authorized by the government in the case of public interest, in 
particular, national security, national emergency, nu trition, health, environment conservation, or the 
development of other vital sector if  the national economy so requires. 
 Early working of a patent (Bolar Provision) 
 
 The rights conferred on the owner by the pate nt under section 54(1) of the Industrial Property 
Act, 2001, shall not apply to acts by third parties necessary to obtain approval or registration of a IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 9 
 
 
product from the Institute, for the purpose of comme rcialising the product after the expiry of the 
patent.  This allows experimentation for commercia l purposes.  In the case of pharmaceutical patents 
it permits the initiation of procedures for the registra tion of a medicine by a third party before the 
expiry dates of the respect patents, so as to sp eed up the commercialisation of a generic product after 
that date.  This exception is usually known as early working or Bolar Provision. 
 B. C
OPYRIGHT AND RELATED RIGHTS  
2. Please state how your legislation provides fo r the protection of the exclusive rights of 
authors in relation to their literary and artistic works, as specified in Article 9 of the TRIPS 
Agreement which requires Members to comply with  Articles 1-21 of the Berne Convention and 
the Appendix to the Berne Convention (1971). 
Literary and artistic works are protected works under Section 3 of the Copyright Act Cap 130 
of the Laws of Kenya.  Section 7 of the said Act gr ants authors of literary and artistic works exclusive 
rights to control their works. 
 
 The term of protection of the said works is fifty years after the end of the year in which the author dies.  This is provided for under section 4 of the Copyright Act.  
3. Please describe the protection accorded to  authors of computer programs, databases or 
compilations of data.  
 By virtue of section 3(1) of the Copyright Act, Cap 130 of the laws of Kenya, computer 
programs are eligible for copyright protection as literary  works.   The proposed amendment to clause 2 of the Co pyright Bill, 2001, includes both the object and 
source code in the definition of a computer program. 
 
 Compilations of data including tables and comp ilations of data stored and embodied in a 
computer or a medium used in conjunction with a computer are  protected as literary works, under 
clause 2 and 22 of the Copyright Bill.  This includes CD-ROMS. 
 
4. Please state whether your legislation provides for a rental right and, if so, the works to 
which it applies. 
 Section 7 of the Copyright Act grants the copyri ght owners in respect of literary,  musical or 
artistic works and audio-visual works, inter alia , exclusive rental rights.  This includes the rental 
rights relating to computer programs and cinematographic works.  
 
5. Please describe the rights granted to performers, producers of phonograms (sound 
recordings) and broadcasting organisations under your legislation. 
 Section 12 of the Copyright Act grants protec tion to performers in relation to broadcasts, 
communication to the public, fixation and reproduction of his works.  Protection of the rights of the performance subsists for fifty years after the end of the year in which the performance took place. 
 
 Section 9 of the Copyright Act grants protecti on to sound recordings.  This is the exclusive 
right to control, prohibit reproduction, distribut ion, broadcasts and importation of works.  The 
reproduction right includes reproductions made from br oadcasts as well as digital transmission (both 
transient and permanent form).  IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 10 
 
  Section 10 of the Copyright Act grants protecti on to broadcasting organisations to control the 
recording and the re-broadcasting of the whole or  a substantial part of the broadcast and the 
communication to the public.  The broadcasting organizations are also granted the right to prohibit any fixation of their work. The term of protection of broadcasts is fifty years after the end of the year 
in which the broadcast took place. 
 
6. Please state whether your legislation provides for any limitation or exception in relation 
to each of the rights described above in acco rdance with the relevant provisions of the Berne 
and Rome Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement. 
 Section 7 of the Copyright Act, sets the limitati ons and exceptions to the exercise of exclusive 
rights by the copyright owner.  This includes, fa ir dealing for the purposes of scientific research, 
private use, criticism or review of reporting of current events subject to acknowledgement of the 
source.  
 In the case of sound recordings, Section 9.1 states that the making of a single copy of the 
recording for personal and private use does not cons titute the infringement of the owner's rights. 
  Section 7 sets our the exceptions to the right of reproduction as hereunder:   (i) The right of reproduction of a broadcast if  the production is intended to be used for 
purposes of systematic instructional activities; 
 
(ii) Reproduction of sound recordings which have  been imported and fair compensation 
has been paid to th e right holder;  and 
 
 (iii)  Reproduction of a work by or under th e direction or control of the Government. 
  Note:  The limitations and exceptions do limit th e normal exploitation of the works by their 
owners. 
 
7. Please state the terms of protection of each right described above and the work or 
subject-matter to which it applies. 
Section 4 of the Copyright Act provides: 
 - literary, musical and artistic works - fifty years after the end of the year in which the 
author dies; 
 
 - audio visual works and photography - fifty years from the end of the year in which the 
work was, first made available to the public , first published, whichever date is latest 
(Clause 23 of the Copyright Bill 2001); 
 
 - sound recordings - fifty years after the end of the year in which the recording was 
made; 
 
 - broadcasts - fifty years after the end of the year in which the broadcast took place. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 11 
 
 
8. Please state how your legislation grants the retroactive protection provided pursuant to 
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS Agreement) and Article 14.6 of the TRIPS Agreement. 
 Section 19 of the Copyright Act protects the works made before the commencement of the 
said Act (1966) and those made thereafter.  The pr otection is extended to all members of the Berne 
Union and other treaties that Kenya is a  party to  under Section 18 of Cap 130, and clause 49 of the 
Copyright Bill, 2001.  C. T
RADEMARKS  
9. Please give the definition of a sign under your national legislation and explain under 
what conditions it is protectable. 
 The Trade Marks Act does not use the word "sign"  but rather the word "Mark" in section 2 of 
the Trade Marks Act, which is defined to include  a distinguishing guise, slogan, devise, brand, 
heading label, ticket, name, signature, works, lette r or numeral or any combination thereof whether 
rendered in two-dimensional or three-dimensional form. 
 
10. Please confirm whether or not services are a protectable subject-matter in your 
trademark law.  Please confirm if signs, such as  trade names, are protectable.  Please describe if 
elements such as sound, perfumes and containers are protectable. 
 The Trade Marks Act was amended in 1994 to inco rporate the protection  of service marks.  
Trade names and containers are protectable but sound and perfumes are not protectable 
subject-matter. 
 
11. Please explain what the requirements of use are, if any, as a condition for a trademark registration.  Please explain the definition of  use and the conditions of maintenance of a 
registration in that respect. 
Use is not a mandatory prerequisite for re gistration however, under section 29 (1) of the 
Trade Marks Act, a registered trade mark may be take n off the register in respect of any of the goods 
or services in respect of which its is registered on application by any person aggrieved to the court or, 
at the option of the applicant and subject to the provisions of section 53, to the Registrar, on the ground that either: 
 
 (a) The trade mark was registered without any bona fide intention on the part of the 
applicant for registration that it should be used in relation to those goods or services 
by him, and that there has in fact been no  bona fide use of the Trademark in relation 
to those goods or services by any proprietor thereof for the time being up to the date 
one month before the date of the application;  or 
  (b) Up to the date one month before the da te of the application a continuous period of 
five years or longer elapsed during which the Trademark was a registered Trademark and during which there was a registered Trade mark and during which there was no 
bona fide use thereof in relation to those goods or services by any proprietor thereof 
for the time being. 
  Trademarks registered as defensive marks are not subject to this provision. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 12 
 
 
12. Please confirm whether or not your legislation permits that the registration of 
trademarks be indefinitely renewable. 
 Section 23(1) protects a trademark for a period of seven years, but may be renewed from time 
to time. A trademark is renewed after a period of fourteen years indefinitely.  Under the proposed 
amendment to the Trade Marks Act, a trademark may be renewed after a period of 10 years 
indefinitely. 
 
13. Please describe the special requirements, if any, prescribed by your legislation concerning the use of a trademark. 
There are no special requirements except as provide d for in section 29 indicated in the answer 
to question 11 above. 
D. G
EOGRAPHICAL INDICATIONS  
14. Please explain whether or not your tr ademark registration authority refuses a 
trademark application if it contains a geographical indication. 
 Under clause 21 of part VI on special provi sions concerning marks and exceptions, in the 
Geographical Indications Bill, 2001, the Registrar of  trade marks may, on his own motion or at the 
request of an interested  party, after hearing all the parties concerned, refuse or invalidate the 
registration of a trade mark, which contains or cons ists of a geographical indication with respect to 
goods not originating in the territory if the use of the indication in the trademark for such goods in Kenya is of such a nature as to mislead the public as to the true place of origin. 
 
15. Please give the definition of a geographical indication in your legislation. 
 Clause 2(f) of the Geographical Indication Bill 2001, defines a geographical indication in 
relation to goods or services, as a description or a representation used to indicate the geographical origin, in the territory of a country or a region or locality in the territory, where a given quality, 
reputation or other characteristics of goods or services are exclusively or essentially attributable to 
geographical environment including natural factors, human factors or both.  Goods means natural or 
agricultural products or products of handicraft or industry. 
 
16. Please describe and explain the provisions of your legislation establishing a link, if any, between the characteristics of an indication and its geographical origin. 
See answer to question number 15 above.  
17. Please describe how additional protection is granted by your legislation to wines and 
spirits.  Please mention other types of products, if any, covered by this additional protection. 
 The Geographical Indication Bill, 2001, gives no special provision for additional protection 
granted to wines and spirits.  Clause 2(g) defin es goods protected by geographical indications as 
natural, agricultural products, products of handicraf t and industry.  This also includes protection of 
wines and spirits.   Clause 2(k) defines a producer of goods and services as:  
 (i) any producer of agricultural products or  any other person exploiting natural products; 
  (ii) a manufacturer of products of handicraft, or industry; and IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 13 
 
 
 (iii) any trader dealing in the said products.  
18. Please explain how exceptions under Articl e 24 of the TRIPS Agreement are used in 
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of 
names considered as generic in your jurisdiction. 
The exceptions will be provided for in the implementing regulations. 
E. I
NDUSTRIAL DESIGNS  
19. Please explain whether or not your legislation extends to the protection of designs 
dictated essentially by technical or functional considerations.  Please explain how textile designs 
are protected. 
Designs dictated by technical features or f unctional consideration ca nnot be protected under 
the provisions for protection of industrial designs.  Section 72(2) of the Industrial Property Act, 
provides that the protection shall not extend to anything in an industrial design which serves solely to obtain a technical result. 
 
 There are no special provisions for the protec tion of textile designs separate from those of 
industrial designs in general.   
20. Please explain how your legislation protects right holders of a design against importing 
of articles bearing embodied or copied design. 
 Under section 73(1) of the Industrial Property Ac t, any creator of an industrial design or his 
successors in title shall have the ex clusive right to exploit the design,  to sell or cause to be sold for 
commercial or industrial purposes the goods in whic h the design is incorporated, subject to the 
conditions of this Act. Without prejudice to th e rights conferred by any other written law, the 
registration of an industrial design shall extend only to acts done for industrial or commercial 
purposes and shall not extend to acts in respect of a product embodying the protected industrial design 
after the products has been lawfully imported or sold in Kenya. 
 
21. Please state whether or not your legislation provides for the right to issue a compulsory 
licence for industrial designs. 
The Industrial Property Act and Industrial Propert y Bill, 2001, do not provide for compulsory 
licensing of Industrial Designs.  
22. Please indicate for what period of time your legislation grants protection for industrial 
designs. 
 Sections 75(1) and (2) of the Industrial Prope rty Act provides that a registered industrial 
design is protected for a period of five years beginning from the date of deposit of the design, 
renewable for two consecutive periods of five years each. 
 F. P
ATENTS  
23. Please describe how your legislation defin es the notions of: novelty, inventiveness and 
industrial application. 
Novelty:   Under section 8 of the Industrial Property Act an invention is new if it is not anticipated by 
the prior art.  Under the same provisions, prior art is considered to be everything made available to the IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 14 
 
 public by means of written disclosure, by oral di sclosure, use exhibition or other non-written means. 
Such making available is only taken into account if  it occurred before the date of filing of the 
application or, the validly claimed priority. However, disclosure made within twelve months proceeding the filing or priority date claimed is not  considered in the assessme nt of novelty if it was 
as a result of acts committed by the applicant or his predecessor in title or is an evident abuse of the 
rights of applicant.   Inventiveness:  Under the section 9 of the Act an inve ntion is considered to have an inventive step, if 
having regard of the prior art at the date of filing or  at the validly claimed priority, the invention could 
not have been obvious to a person skilled in the art. 
 
Industrial Applications:  Under the provisions of Section 10 of the Act (same as Clause 25 of the bill) 
an invention is industrially applicable if it can be made or be used in any kind of industry, including 
agriculture, fishery and services.   
24. Please explain whether or not in your legislat ion, patent or otherwise, patent rights are 
enjoyed without any exclusions.  If exclusions  are provided for, please describe in detail how 
these exclusions are applied in legal as well as practical terms. 
 Section 38 of Cap 509 provides that: 
 
(i) the rights under the patent shall extend only to acts done for industrial or 
commercial purposes and not to acts done for scientific research; 
 (ii) the rights under the patent shall not extend to acts in respect of articles, which 
have been put on the market in the country by the owner of the patent or with his 
express authority; 
 
(iii) the rights under the patent shall not extend to the use of articles on aircrafts, land 
vehicles or vessels of other countries, which temporarily or accidentally enter the airspace, territory, or waters of the country; 
 
(iv) the rights under the patent shall be limited by the provisions on the patent terms; 
 
(v) the rights under the patent shall be limited by the provisions of compulsory 
licence for reasons of public interest or based on interdependence of patents and 
by the provisions on state exploitation of patented inventions. 
  
25. Please explain whether your legislation provides for the exclusion of inventions from 
patentability based on ordre public  or morality.  If so, please explain the relevant section of your 
legislation and explain its formulation.  Please al so explain if it has been applied in practice. 
Section 11(b) of the Act provides for exclusion from patentability of inventions contrary to 
public order and morality.  
26. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded 
from patentability in your legislation.  If so, please explain the relevant section of your legislation and explain its formulation. 
Section 6(3)(c) of the Industrial Property Act provides that methods for treatment of the human 
or animal body by surgery or therapy, as well as  diagnostic methods, except products in particular 
substances or compositions, for use in any of those methods shall not be regarded as inventions and 
shall be excluded from patent protection. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 15 
 
 
27. Please explain whether or not plants, an imals and essentially biological processes are 
excluded from patentability in your legislation.  If so, please explain the relevant section of your legislation and explain its formulation. 
Plants, animals and essentially biological  processes are excluded from patentability. 
Section 6(3)(a) states that "discoveries or findings  that are products or processes of nature where 
mankind has not participated in their creation (inc luding animals, plants and micro-organisms) and 
scientific and mathematical methods and theories".
 
 
28. Please describe how micro-organisms , non-essentially biological processes, 
microbiological processes and plant varieties are prot ected in your legislation. Please explain, in 
this respect, the relevant sections of your legislation. 
 Microorganisms, which occur naturally, are not patentable under the Act.  However, under 
section 11(a) of the Act, where the micro-organism is a product of biotechnology, patent for them and 
for products and processes that use them are patentable  if they meet the criteria of patentability.  Non-
essentially biological processes are also patentable.  Plant varieties are protected under the Seeds and 
Plant Varieties Act, Cap 326, which gives a grant of Plant Breeders Rights. 
 
29. Please explain how your legislation prot ects patent right holders against the importing 
and against the offering for sale of a patented invention. 
Under Section 36 of the Act, a patent holder is given the right to preclude any person from 
exploiting the protected invention by making, impor ting, stocking, offering for sale, selling and using 
the patented product.  Where the patent is in resp ect of a process, the patent holder has the right to 
preclude any person from using the patented pro cess or doing any of the acts mentioned above in 
respect of products produced by means of the patented process.  
30. Please state if your legislation provides fo r patent product protect ion of pharmaceutical 
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference. 
Pharmaceuticals and agricultural chemical produc ts fall within the meaning of patentable 
inventions as indicated under section 6 of the Act and are therefore patentable.  
 
31. Please clarify if the patent protection of a process, as provided for in your legislation, 
covers the product obtained directly by that process. 
Patent protection of a process covers the product ob tained directly by the process.  This is as 
provided for under the rights of a patent holder, section 36(a)(ii).  
32. Please explain the additional conditions, if any, in your legislation other than the 
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of 
justification for access to genetic material or prior inform consent to its use).  If such additional 
conditions exist, please point out the relevant legi slations and describe the additional conditions 
in detail. 
 There are no additional conditions at present for di sclosure of the inventions in Article 29 of 
the TRIPS Agreement covering access to genetic mate rial or prior informed consent to its use. 
 
33. Please describe if your legislation provides for limited exceptions to the exclusive rights 
conferred by a patent.  If affirmative, pl ease make a reference to relevant legislation. 
Section 38 of the Act provides that: IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 16 
 
 
(i) the rights under the patent shall extend only to acts done for industrial or 
commercial purposes and in not to acts done for scientific research acts; 
 (ii) the rights under the patent shall not extend to acts In respect of articles, which 
have been put on the market in the country by the owner of the patent or with his 
express authority; 
 
(iii) the rights under the patent shall not extend to the use of articles on aircrafts, land 
vehicles or vessels of other countries, which temporarily or accidentally enter the 
airspace, territory, or waters of the country; 
 
(iv) the rights under the patent shall be limited by the provisions on the patent terms; 
 
(v) the rights under the patent shall be limited by the provisions of compulsory 
licence for reasons of public interest or based on interdependence of patents and 
by the provisions on state exploitation of patented inventions. 
  
34. Please explain whether or not your legislat ion provides for compulso ry licensing. If so, 
please explain in detail the conditions under which a compulsory licence may be granted.  In 
particular, please explain how your national le gislation considers individual merits in the 
authorization of such use. 
Under sections 95, 96 and 97, of the Act compulsory licences are provided for.  Under this 
section, the following are grounds for application for compulsory licences: 
 
I. Non working of the invention 
II. Working that does not meet the market demand 
III. When working is hindered by lack or  importation of the patented product 
IV. Unreasonable terms of licensing by the holder of the patent 
V. Unreasonable pricing of the patented product 
VI. Interdependence of patents 
VII. Vital importance to the public health  scientific, economy, technological advancement 
and environmental conservation. 
 
 Compulsory licences are not automatically ava ilable but a petition will ha ve to be lodged with 
the Tribunal, which considers each case on its own me rit.  Preconditions for the grant of a patent are 
stated under section 98 of the Act.  35. Please explain how your legislation explic itly ensures that a proposed user has made 
efforts to obtain authorization from the ri ght holder on reasonable commercial terms and 
conditions and that such efforts have not been su ccessful within a reasonable period of time. In 
this context, how do you define "reasonable p eriod of time".  Please also explain how your 
legislation ensures that the use of a compulsory licence shall be authorised predominantly for 
the supply to the domestic market of the Member authorizing such use. 
Section 98(a) of the Industrial Property Act provides that: 
 
 A compulsory licence shall not be gran ted unless the person requesting the licence: 
 
 (i) satisfies the Tribunal that he has asked  the owner of the patent for a contractual 
licence but has been unable to obtain the licence on reasonable terms; 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 17 
 
 
 (ii) offers guarantee satisfactory to the Tribunal to work the relevant invention 
sufficiently to remedy the deficiencies, which gave rise to his request. 
  Reasonable period of time means at least six months.
 
 36. Please state if your legislation grants additional protection for innovations after the 20 years of patent protection has lapsed. 
 There is no additional protection after expiry of the term of a patent.  
 
37. Please explain how your legislation provid es for the enhanced patent protection of 
patents or patent applications pending on 1 January 1995. 
There is no enhanced protection for patents pending on 1
 January 1995. 
38. Please explain how your legislation provides for the reversal of the burden of proof in 
relation to process patents. 
Under section 116 of the Industrial Property Act,  the burden of proof lies wholly with the 
plaintiff and reversal of that is null and void.  However, under clause 110 of the Bill the burden of 
establishing that an identical product was not made by the patented process shall be on the alleged 
infringer. 
G. L AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS  
39. Please describe how your legislation protects Topographies. 
 Existing Kenyan laws do not provide for th e protection of Layout-Designs of Integrated 
Circuits; but there is proposed legislation namely th e Layout-Designs of Integrated Circuits Bill, 2001 
that seeks to protect this category of Intellectual Property.  
40. Please explain what protection your national legislation grants to right holders against 
the unlawful importation, sale or distribut ion for commercial purposes of topographies 
including integrated circuits or other articles  in which a topography is incorporated in 
accordance with Article 36 of the TRIPS Agreement. 
The Layout-Designs of Integrated Circuits Bill,  2001 proposes to confer the following rights 
in Section 8, which states that: 
 
(1) Protection under this Act shall not depend upon whether or not the Integrated Circuit 
that incorporates the protected Layout-Design is itself incorporated in an article.  
Subject to subsection (2) and to  section 18, the protection shall have the effect that 
the following acts shall be unlawful if performed without the authorization of the right holder: 
 
(a) reproducing, whether by incorporation in an Integrated Circuit or    otherwise, 
the protected Layout-Design in its entirety or any part thereof, except the act 
of reproducing any part that does not comply with the requirement of originality referred to in section 5; 
 
 (b) importing, selling or otherwise distributing for commercial purposes the 
protected Layout-Design of an Integrated Circuit in which the protected Layout-Design is incorporated or an arti cle incorporating such an Integrated IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 18 
 
 
Circuit in so far as it continues to contain an unlawfully reproduced Layout-Design; 
   (2) The effect of protection of a Layout-Design under this Act shall not extend to: 
 
(a) reproduction of the protected Layout-Design for non-commercial purposes or 
for the sole purpose of evaluation,  analysis, research or teaching; 
 
(b) the incorporation in an Integrated Circuit of a Layout-Design created on the 
basis of such analysis or evaluation and which is itself original in the meaning 
of section 5 or the performance of any of  the acts referred to in subsection (1) 
in respect of that Layout-Design; 
 
(c) the performance of any of the acts re ferred to in subsection (1)(b) where the 
act is performed in respect of a protected Layout-Design, or in respect of an 
Integrated Circuit in which such a Layout-Design is incorporated, that has been put on the market by, or with  the consent of, the right holder; 
 
(d) the performance of any of the acts refe rred to in subsection (1)(b) in respect 
of an Integrated Circuit incorporating an unlawfully reproduced Layout-
Design or any article incorporating such  an Integrated Circuit, where the 
person performing or ordering such an act did not know and had no 
reasonable ground to know, when acquiring the Integrated Circuit or the article incorporating such an Integrat ed Circuit, that it incorporated an 
unlawfully reproduced Layout-Design. However, after the time that such a 
person has received sufficient notice th at the Layout-Design was unlawfully 
reproduced, that person may perform any of the said acts only with respect to 
the stock on hand or ordered before such  time and shall be liable to pay to the 
right holder a sum equivalent to a re asonable royalty such as would be 
payable under a freely negotiated licence in respect of such a Layout-Design; or 
 
(e) the performance of any of the acts referred to in  subsection (1)(b) where the 
act is performed in respect of an identical Layout-Design which is original and has been created independently by a third party. 
 
41. Please explain how your legislation provides for the derogation from Article 36 as 
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to know when acquiring an integrated circuit or an article incorporating such an integrated circuit that it contains an unlawful topography.  
 The Layout-Designs of Integrated Circuits B ill, 2001 proposes to der ogate from Article 36 of 
the TRIPS Agreement through Section 8 (2) (d) as follows: 
 
(d) the performance of any of the acts referred to in subsection (1)(b) in respect of an 
Integrated Circuit incorporating an unlawfully reproduced Layout-Design or any article incorporating such an Integrated  Circuit where the person performing or 
ordering such an act did not know and had no reasonable ground to know, when 
acquiring the Integrated Circuit or the article incorporating such an Integrated Circuit, 
that it incorporated an unlawfully reproduced Layout-Design.  However, after the time that such a person has received sufficient notice that the Layout-Design was unlawfully reproduced, that person may perform any of the said acts only with respect to the stock on hand or ordered before  such time and shall be liable to pay to IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 19 
 
 
the right holder a sum equivalent to a reasonable royalty  such as would be payable under a freely negotiated licence in respect of such a Layout-Design; or 
 (e) the performance of any of the acts referred to in  subsection (1)(b) where the act is 
performed in respect of an identical Layout-Design which is original and has been 
created  independently by a third party.  
 
42. Please state the term of protection granted by your legislation to topographies. 
 Under clause 9, of the Layout-Designs of Integrated Circuits Bill, 2001 provides for the 
commencement and duration of protection of topographies: 
 
(1) Protection of a Layout-Design of an Integrated Circuit under this Act shall  
commence on the filing date accorded to th e application for the registration of the 
Layout-Design of an Integrated Circuit filed by the right holder whether the Layout-
Design of an Integrated Circuit has or has not been previously exploited 
commercially anywhere in the world. 
 
(2) Protection of a Layout-Design of an Inte grated Circuit under this Act shall commence 
on the date of the first commercial explo itation, anywhere in the world, of the 
Layout-Design by or with the consent of, th e right holder, provided an application for 
protection is filed by the right holder with the Institute within the time limit referred 
to in section 5(4). 
 
(3) Protection of a Layout-Design under this Ac t shall terminate at the end of the tenth 
calendar year after the date of commencement of protection. 
 
H. P
ROTECTION OF UNDISCLOSED INFORMATION  
43. Please explain whether or not your legislation grants a defined period of time for the 
protection of undisclosed information. If so, please give the time span. 
Kenya is in the process of drafting a new bill to protect undisclosed information.  
44. Please explain how your legislation defines undisclosed information. 
Refer to the answer to question 43 above.  
45. Please explain how your legislation defines data submitted to governments or 
governmental agencies. 
Refer to the answer to question 43 above 
I. E NFORCEMENT  
46. Please describe how your legislation provides for effective action against infringement of 
intellectual property rights. 
 (1) The Industrial Property Act establis hes a Tribunal under section 118, which has 
jurisdiction over infringement cases.  The Tr ibunal is given powers to make any order 
for the purpose of securing attendance of an y person, the discovery or production of 
any document, or the investigation or punish ment for any contempt of court.  Under 
section 110 the Tribunal is empowered to grant the following relief: IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 20 
 
 
(a) an injunction to prevent infringement where infringement is imminent or to 
prohibit the continuation of the infringement, once infringement has started; 
(b) damages; and 
 
 (c) any other remedy provided in law. 
 
The Act also provides for criminal prosecution under section 113.  However, infringement of 
industrial designs and utility models are not crimin al offences under the Act, but the new Bill provides 
for extension of civil and criminal remedies to the same. 
 
Appeal from the decision of the Tribunal can be made in the high court as provided for under 
section 120 of the Act.  
 Under the Copyright Act the High Court has jurisdiction over cases of Copyright 
infringement. Section 15 thereof provides for civil re medies against the infringer.  The plaintiff is 
entitled to relief by way of damages, injunction or other relief available in any corresponding 
proceedings.  He is also entitled to deliver up of any article in the possession of the defendant which 
appears to the court to be an infringing copy.  
 Criminal procedures are also available for infringement of copyrights under section 16 of the 
said Act.  It is the Resident magistrate's cour t and the High Court, which have jurisdiction over 
copyright infringement cases.  Criminal penalties include available custodial sentences and fines. 
 The Attorney General and the police department  are public authorities for initiating criminal 
proceeding. 
 
Private persons may initiate criminal proceedings but they have to be granted the authority by 
the Attorney General who is the Ch ief Public prosecutor in Kenya. 
 
 Under section 29(1) of the Seed and Plant Vari eties Act, infringement of plant breeders rights 
shall be actionable at the suit of the holder of such rights and in any proceedings for such an 
infringement all such relief, by way of damages inj unction, account or otherwise shall be available as 
in any proceedings in respect of  infringements of other property. 
 
47. Please explain whether or not your legislat ion provides for a mechanism to appeal to 
judicial bodies of final administrative decisions. 
 Under the Kenyan legislation, there is provision for appeals right to the Court of Appeal. 
 
48. Please describe how your legislation author izes judges to order production of evidence 
by the opposing party.  Please give precise info rmation on what measures are taken to ensure 
the protection of confidential information. 
 Under the Civil Procedure Code, Judges have powers to order production of evidence by the 
opposing party.  Clause 37 of the Copyright Bill, 2001, provides making of orders to secure the 
preservation of the documents, copies or things as evidence.   Under section 118 of the Industrial Property Act,  the Tribunal is empowered to make orders 
for the production of evidence by the opposing party. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 21 
 
 
49. Please quote provisions of your legislation that authorize judges to order a defendant to 
desist from an infringement. 
 This is provided for under section 110 of th e Industrial Property Act as far as patents, 
industrial designs and utilit y models are concerned. 
 
50. Please quote what provisions of your legislation authorize judges to order the payment 
to the right holder of adequate damages to compensate the injury he suffered. 
Relief is provided under section 11 0 of the Industrial Property Act.  Under section 110(b) the 
Tribunal can award damages to the injured party.  
51. Please quote what provisions of your legislation authorize judges to order the payment 
of the right holder's expenses by the infringer. 
Relief is provided under section 110(1)(c) of th e Act, as any other remedy provided for in 
Law. 
 
52. Please explain if and how judges have the authority to order that infringing goods are 
placed outside channels of commerce or destroyed. 
 Section 58 H (1) of the Trade Marks Act, provides that upon conviction of any person for 
forgery of a trade mark, any goods in respect of or by means of which the offence was committed may 
be forfeited to the Government.  
 
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in the event of abuse by the plaintiff. 
This issue is covered by the Civil Procedure Code - misuse of court processes.  
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement. 
The Tribunal is empowered to give injunctions  to prevent infringement as provided for under 
section 110 of the Industrial Property Act.  For imported goods one can obtain an injunction to 
suspend the release of infringing goods as products subject of IPR are the subject of restricted goods as provided under section 14, 15 and schedule 8 of the Customs and Excise Act.  
55. Please identify the competent authorities in  your jurisdiction who receive requests from 
right holders for an application to suspend the release of counterfeit goods by the customs 
authorities. 
 The Commissioner of Customs and Excise. 
 
56. Please indicate whether or not procedures  are available to suspend the exporting of 
counterfeit goods. 
 Procedures are available. This is governed  by section 14(2) and 15(2)(a) and the eighth 
schedule of the Customs and Excise Act. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 22 
 
 
57. Please quote what provisions of your legisl ation authorize the competent authorities to 
order the destruction or disposal of infringing goods. 
 Sections 14(2), 15(2)(a) and the eighth schedule of the customs and Excise Act provide for 
this. The offence procedures are provided for under section 185.  58. Please indicate whether or not your legislation provides for a de minimis  imports 
exception. 
This is covered by Section 38(1)  of the Industrial Property Act.  
59. Please explain how your legislation implements Article 61 of the TRIPS Agreement. 
 This issue is covered by the answer s to the questions posed by Canada. 
 
IV. RESPONSE TO A QUESTION POSED BY JAPAN 
 C
OPYRIGHT AND RELATED RIGHTS  
 Please explain exceptions or exemptions of  the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in 
Articles 3 and 4 of the TRIPS Agreement.  
 There are no exceptions or exemptions to th e principle of national treatment and most 
favoured nation treatment under the copyright Act.  
 
 
V. RESPONSES TO QUESTIONS POSED BY SWITZERLAND 
A. G
EOGRAPHICAL INDICATIONS  
1. Please explain in detail how your legi slation provides protection for geographical 
indications. 
 
 Kenya has now a draft Bill for Geographical Indications pending before Parliament.    Clause 2(f) of the Bill contains the following definition of a geographical Indication:  
"Geographical Indication" in relation to goods  or services, means a description or a 
representation used to indicate the geographical origins, in the territory of a country or a 
region or locality in that territory where a give n quality, reputation or other characteristics of 
goods or services are exclusively or essentially attributable to geographical environment, including natural factors, human factors or both". 
 
Part III: Protection of Geographical Indications 
  4. Availability of Protection under this Act shall be available Protection regardless of 
Registration presumption:  
 (1) regardless of whether or not a geographical indication has been presumption 
registered.  However, registration of a geographical indication under Part II 
of this Act shall, in any proceedings under this Act, raise a presumption that IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 23 
 
 
such indication is a geographical indication within the meaning of section 2(f); and 
  (2) against a geographical indication wh ich, although literally true as to the 
territory, region or localit y in which the goods originate, falsely represents 
 to the public that the goods originate in another territory. 
  5. In the case of homonymous geographi cal indications for goods, geographical 
protection shall be accorded to each indication subject to section 4(2).  Indications for the 
Registrar, in cases of permitted concurred use of  such indications, goods shall determine the 
practical conditions under which the hom onymous indications in question will be 
differentiated from each other, taking into account the need to ensure equitable treatment of 
the producers concerned and that consumers are not misled. 
 
 6. The following shall not be protected as geographical indications: 
   (1) Indications which do not corres pond to the definition in section 2(f); 
   (2) Indications, which are contrary to public order or morality;  
 (3) Geographical indications which are not or cease to be protected in their 
country of origin, or which have fallen into disuse in that country". 
 B. P
ATENTS  
2. Does your legislation grant patent protection to all categories of products or are there 
any exceptions?  If so, please explain in deta il what kind of exceptions exist and how they 
comply with Article 27 of the TRIPS Agreement. 
 
 Section 12 of the Industrial Property Act provides for temporary exceptions by the Minister but this has been excluded under the Industrial Property Bill 2001.  3. Does your legislation, in accordance with Ar ticle 27.1 in combination with Article 31 of 
the TRIPS Agreement, consider importation as "working" a patent (and therefore preclude 
compulsory licensing, if a product is being imported)?  
Yes.  The Bill in accordance with Article 27.1 in combination with Article 31 of the TRIPS 
Agreement considers importation as "working" a pate nt and therefore precludes compulsory licensing, 
if a product is being imported.  This is taken care of by clauses 72 to 74 of the Industrial Property Bill, 
2001. 
 
4. Does your legislation make the granting of a compulsory license subject to all the 
conditions enumerated in Article 31 of the TR IPS Agreement?  Please cite the relevant 
provisions of law. 
 
 Yes.  The Bill makes the granting of a compulsory licence subject to all the conditions set out 
in Article 31 of the TRIPS Agreement.  Clauses 72 to 78 of the Bill takes care of this issue. 
 5. Does your legislation provide for the principle of the reversal of burden of proof in a process patent litigation?  Please cite the relevant provisions of law.  
 Yes.  The Bill provides for the pr inciple of the reversal of burden of Proof in a process patent 
litigation. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 24 
 
   Clause 110 of the Bill provides:   "110  For the purposes of proceedings, other th an criminal proceedings, in respect of the 
infringement of the rights of the owner of  the patented patent, where the subject-
matter of the patent is a process for process obtaining a product, the burden of establishing that an identical product was not made by the patented process shall be on the alleged infringer, if either of the following conditions is fulfilled: 
 
  (a) the product is new; or 
  (b) a substantial likelihood exists that  the identical product was made by the 
process and the owner of the patent has been unable, through reasonable 
efforts, to determine th e process actually used". 
 
C. P
ROTECTION OF UNDISCLOSED INFORMATION  
6. Please explain in detail if your legislation ensures that undisclosed test or other data 
submitted by an applicant to the responsible State agency in the procedure for market authorisation of a pharmaceutical or of an agr icultural chemical product is protected against 
disclosure and against unfair commercial use by a competitor, for example by prohibiting a 
second applicant from relying on, or from referring to the original data of the first applicant, 
when applying subsequently for market au thorisation for his own product.  Does your 
legislation provide for exceptions to this? If yes, under what conditions would such exceptions 
apply?  Does your legislation set a specific term of  protection for undisclosed test or other data 
of the first applicant? 
  Kenya is now in the process of drafting a Bill on Protection of Undisclosed Information.  
 
Follow-up question: 
  You mention that you are currently developing the legislation on protection of 
undisclosed information.  Please explain what the draft Bill provides in this regard and when 
the new regulation is supposed to enter into force.  
 
 Currently, Kenya has no specific legislation on  the protection of undisclosed information.  
Protection of undisclosed information is provided fo r in other legislation such as the Pharmacy and 
Poisons Act Cap 346, the Pest Control Product Act, Cap 346 of the laws of Kenya, or by the common 
law.  Kenya, however, intends to legislate a law on the protection of undisclosed information in the 
future.  No specific time is set yet to have such a law in place.   Referring to the answers given to the United States original question number 19 during Kenya's review of its legislation: 
 
 Under the Pharmacy and Poisons Act, Cap 244 of the Laws of Kenya, test data submitted to 
the Registrar of Drugs and Pharmaceutic al products, is handled confidentially. 
  The Pest Control Products Act, Cap 346 of 1982, revised in 1985 regulates the importation, 
exportation, manufacture, distribution and use of pr oducts used for the control of pests and of the 
organic function of plants and animals and for connected purpose.   Under Sections 3 and 4 of the Pest Control Products Act, the info rmation submitted to the 
Secretary of the Board for registration of chemical products is not accessible to any third party IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 25 
 
 
without the authority of the owner.  Under secti on 12 of this Act, any pe rson who contravenes the 
provisions of Sections 3 and 4 on confidentiality of information shall be guilty of an offence and shall 
be liable to imprisonment for a term not exceeding two years.  
 Under the two Acts, the Pharmacy and Poisons Act and the Pest Control Products Act, third 
parties do not have access to information previo usly submitted for approval for the marketing of 
pharmaceutical or agricultural chemical products.  Ke nya intends to review the two pieces of Law to 
allow other applicants for the marketing approval for their own versions of a previously approved 
pharmaceutical and agricultural products to permit th e third party to rely on data submitted by the 
earlier applicant, after a certain period of exclusivit y given the earlier application before such reliance 
becomes possible.  This would encourage research  and development including manufacture of generic 
medicine to address our national concerns on the public health and food security sectors. 
 
D. E
NFORCEMENT  
7. Please indicate remedies provided by your  legislation, which constitute effective 
deterrents to infringements of intellectual property rights.  
The Industrial Property Act, and the Trade Marks Act provide for civil relief including 
injunction, award of damages, and in particular section 58 H(1) of the Trade Marks Act provides that: 
 
 "On conviction of any person for an offence under this Part, the court in addition to any 
sentence passed, declare any goods in respect of or by means of which the offence was committed to 
be forfeited to the Government, unless the owner of  the goods or any person acting on his behalf, or 
any other person interested in the goods shows cause to the contrary".  
 In addition to these provisions, the Civil Procedure Code, Cap 21 of the Laws of Kenya 
contains provisions for award of in junctions, damages and taking accounts. 
  Relief is provided for under Section 110 of the Industrial property Act.   These include: 
  
 (a) an injunction to prevent infringement wh ere infringement is imminent or to prohibit 
the continuation of the infringement once it has started; 
   (b) damages;  and 
  
 (c) any other remedy provided for in law.  
 
Follow-up question: 
  Please explain how the special requirements rel ated to border measures of Articles 51 to 
60 of the TRIPS Agreement are implemented in your legislation. 
 
 Note:  Border Measures of Articles 51 to 60 of the TRIPS Agreement are provided for by 
various Laws of Kenya including those on customs and excise, and intellectual property rights.  Some of these legislations are undergoing necessary amendments to further address issues of infringement 
of intellectual property rights.  At presen t, the situation in Kenya is as follows: IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 26 
 
 (a) Article 51:  Suspension of Release by Customs Authorities 
It is possible to suspend release into free circulation any goods of a physical nature.  
However, it is not possible to suspend release of goods transmitted electronically or via satellite.  
Imports of goods put on the market of another co untry by or with the consent of the right holder 
would still be treated in the same way as infringing  goods provided that the aggrieved party applies 
for suspension of release of the same. 
Goods in transit and de minimis  imports would not be subject to suspension of release.  These 
procedures also apply to exports from Kenya. 
(b)  Article 52:  Application for Suspension 
For release of goods to be suspended, an appli cation has to be made to the Commissioner of 
Customs & Excise by the right holder giving evid ence of the existence of a patent, trademark, 
copyright etc.  He should also be able to prove to the Authority that he is the registered right holder. 
(c)  Article 53:  Security or Equivalent Assurance 
Provision/regulation for granting of security or  guarantee to cover the defendant or the 
Commissioner of Customs & Excise is being considered. 
(d)  Article 54:  Notice of Suspension  As soon as the right holder notifies that infringi ng goods have been imported, and evidence to 
that effect given, the importer will be notified - as soon as he lodges the documents for processing - 
that release of the goods has been suspended.  Impor ters are given 21 days within which to clear their 
goods. 
 
 However, provision governing the length and co st of the proceedings and requiring that the 
competent authority, notify the applicant of the accepta nce of his application to suspend release of the 
goods, are being put in place.   
 
(e)  Article 55:  Duration of suspension 
 Once a decision has been made, it remains valid  until over-ruled by a subsequent decision.  
The applicant/party has a right to initiate proceedings , in court, on the merits that will allow customs 
authorities to hold the goods beyond the ten working days.    The logical forum that would be authorized  to review and determine if the suspension 
measures should be modified, revoked, or confir med pending the outcome of the proceeding on the 
merits will be the Commissioner of Customs & Excise.  (f)  Article 56:  Indemnification of th e Importer and of the owner of the goods 
 Provisions/regulations enabling ordering the applicant to indemnify the importer, the 
consignee, and the owner of the goods are being addressed. 
  
(g)  Article 57:  Right of Inspection and Information 
 Provisions are being put in place to enable th e competent authority to fully give the right 
holder, or importer, or exporter sufficient opportuni ty to have any goods detained by the customs 
authorities inspected in order to substantiate respective claims. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 27 
 
 
 (h)  Article 58:  Ex Officio Action 
 Provisions/regulations for ex o fficio action are being considered. 
(i)  Article 59:  Remedies 
 The remedies include penalties, forfeitures, destruction or disposal and seizure. 
 (j)  Article 60:  De Minis Imports 
 Exclusion from suspension for de minis impor ts is possible through the discretion of the 
proper customs officer. 
 
(k)  Article 61:  Criminal Proceedings 
 Wilful infringement of intellectual property rights are subject to criminal procedures and 
penalties, with remedies of imprisonment and/or m onetary fines sufficient to prevent a deterrent as 
well as seizure, forfeiture and destruction of infringing goods and applicable equipment. 
 
8. Please describe any new initiatives that are planned to improve enforcement of 
intellectual property rights in your country, pa rticularly initiatives related to criminal 
enforcement.  
The proposed amendment to the Trade Marks Act, have increased penalties for infringing 
trade marks from a maximum of Kenyan shillings te n thousand (K Sh 10,000) to Kenyan shillings two 
hundred thousand (K Sh 200,000).  
 
 Under the proposed Copyright Bill 2001, the fine  for infringement of Copyright is increased 
from K Sh 200,000 to a sum not exceeding 800,000 and the imprisonment term has been increased to 
a maximum of 10 years. The Bill also seeks to introduce the Anton Pillar orders. 
 
Previously under the Industrial Property Act infringement of Industrial Designs was not a 
criminal offence, however under the proposed Bill it w ill be a criminal offence to infringe a registered 
design punishable the same way as infringement of patents. 
 
Under the proposed Geographical Indications Bill, 2001, infringement of a geographical 
indication shall constitute both a criminal and civ il wrong.  The Tribunal under clause 19(2) of the 
Bill will have powers to issue injunctions and awar d damages and grant any other civil relief as it 
shall deem fit.  The proposed penalties for crim inal offence are a fine not exceeding 100,000 or 
imprisonment not exceeding 5 years. 
 
 
VI. RESPONSES TO QUESTIONS POSED BY THE UNITED STATES 
A. G
ENERAL  
1. Please describe, in relation to each form of intellectual property covered by the TRIPS 
Agreement, including plant variety protection, th e manner in which nation treatment and most 
favoured nation treatment are provided to nationals of other WTO Members. 
 
 There is no discrimination for non- citizen in the intellectual property legislation in Kenya. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 28 
 
 B. C
OPYRIGHT AND RELATED RIGHTS  
2. Please explain how the copyright law of Kenya  protects computer programs as literary 
works and complications of data as required  by Article 10 of the TRIPS Agreement. 
 
 By virtue of section 3(1) of the Copyright Act Cap 130, of the laws of Kenya computer 
programs are eligible for copyright as literary works.   The proposed amendment to clause 2 of the Copyright Bill 2001, includes both the object and source code in the definition of a computer pr ogram.  Compilation of data including tables and 
compilation of data stored and embodied in a com puter or a medium used in conjunction with a 
computer are protected as literary works, under clause 2 of the Copyright Bill and clause 22 of the same Bill.  This includes CD-ROMS. 
 
3. Article 11 of the TRIPS Agreement requires that rental rights for computer programs 
and cinematographic works be available.  Please cite to the corresponding provision of the 
copyright law of Kenya. 
 
 As computer programs are protected as literary  works, the nature of copyright in literary 
works and audio-visual works is covered in secti on 7 of the Copyright Act Cap 130 which grants the 
copyright owners in respect of each category of works, inter alia, the exclusive rental rights. 
 4. Please describe the protection the copyright law of Kenya provides for performers, and the term of the protection.  
 Section 12 of the copyright Act grants protec tion to performers in relation to broadcasts, 
communication to the public, fixation and reproduction of  their works.  Protection of the rights of the 
performance subsists for fifty years after the end of the year in which the performance took place 
 
5. Article 14.2 of the TRIPS Agreement provi des that producers of phonograms are to 
enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.  Article 14.2 requires that producers of phonogr ams are to have the right to authorize or 
prohibit the commercial rental to the public of originals or copies of their phonograms.  Please 
describe how the copyright law of Kenya implements these obligations and indicate the term of protection.  
Section 9 of the copyright Act provides protecti on to sound recordings is granted exclusive 
rights to control the direct or indirect reproduction in any manner or form, the distribution to the 
public by way of sale, rental etc. the term of protection is fifty years after the end of the year in which the recording was made.  
Follow-up question: 
 
 Please explain how the requirement th at copyright owners must apply for 
authentication under Article 36 of the proposed Copyright Act of 2000 ("proposed Act") is 
consistent with Article 5(2) of the Berne Convention, which states that the enjoyment and exercise of copyright should not be subject to any formality.  
 The authentication envisaged under Clause 36 of the Copyright Bill (2001) is an enforcement 
measure aimed at curbing piracy of sound recordi ngs, audio-visual works and to a certain extent 
software.  IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 29 
 
 
 This requirement is not a device that will confer  copyright to right holders and is therefore not 
inconsistent with Article 5(2) of the Berne Conventi on.  It is only applicable to those works where 
copyright subsists.  
C. T
RADEMARKS  
6. Please describe the subject-matter that can comprise a trademark under the trademark 
law of Kenya.  
 Under the Trademarks Act Cap 506 of th e laws of Kenya, a trademark includes a 
distinguishing guise, slogan, device, brand, headi ng label, ticket, name, signature, work, letter or 
numerical or any combination thereof whether rend ered in two-dimensional or three-dimensional 
form. 
 
7. Please provide the length and terms of pr otection the trademark law of Kenya provides 
for a trademark.    Under Section 23(1) of the Trademarks Act, the registration of a trademark shall be for a 
period of seven years, but may be renewed for a period of fourteen years  indefinitely   According to the proposed amendments of th e Trademarks Acts, the term of the trademark 
remains seven years, but the renewal of the much shall be every ten years from the date of expiration 
of the original registration or of the last renewal  of registration, as the case may be  
 
8.  Please describe in detail how well-known ma rks are protected under the laws of Kenya.  
 
The Trademarks Act Cap 506 of the laws of Kenya has no provision for the protection of 
well-known marks. The proposed Trademarks Ame ndments provides for the protection of Well-
known marks under  section 15B.   Section 15B of the proposed amendments provides that:   (1) Reference in this Act to a trade mark which is entitled to protection under the Paris 
Convention or the WTO Agreement as a well- known trade mark are to a mark which 
is well known in Kenya as being the mark of a person who: 
   (a) is a national of a Convention country;  or  
 (b) is domiciled in, or has a real and effective industrial or commercial 
establishment in a convention country whether or not that person carries on business, or has any goodwill in Kenya.  Reference to the proprietor of such a trademark shall be construed accordingly; 
  (2) subject to the provisions of section 38 B, the proprietor of a trade which is entitled to 
protection under the Paris Convention or the WTO  Agreement as a well known trade 
mark is entitled to restrain by injunction th e use in Kenya of a trade mark which, or 
the essential part of which is identical or si milar to his in relation to identical or 
similar goods or services, where the use is likely to cause confusion; 
 
 (3) nothing in subsection (2) affects the continuation of any bona fide use of a trade mark 
began before the commencement of this section; 
  (4) a trade mark shall not be registered if that trade mark or an essential part thereof is 
likely to impair or dilute in an unfair manner the distinctive character of the well IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 30 
 
 
known mark or the use of that trade mark would take unfair advantage of the distinctive character of the well known trade mark. 
 
D. G
EOGRAPHICAL INDICATIONS  
9.  Please describe in detail how the laws of Kenya provide for the recognition and 
protection of geographical indications required by  Article 22.2 of the TRIPS Agreement, citing 
to the relevant provisions of law or regulation, and provide examples of geographical indications so protected.   
In January 2001, Kenya drafted a Bill entitled  "The Geographical Indications Bill, 2001". 
 Clause 2(7) of the Bill contains the following definition of a geographical indications: 
 
"Geographical Indication" in relation to goods  or services, means a description of a 
representation used to indicate the geographical origins, in the territory of a country or a 
region or locality in that territory where a give n quality, reputation or other characteristics of 
goods or services are exclusively or essentially attributable to geographical environment, including natural factors, human factors or both". 
  Under clause 2(7) natural or agricultural pr oducts or products of ha ndcraft or industry are 
examples of geographical indication protected under the Act.  10.  Please describe in detail the manner in which the higher level of protection required for wines and spirits under Article 23.2 of the TRI PS Agreement is implemented, citing to the 
relevant provisions of law or regulation, and provide examples of geographical indications for such products. 
 
Under the Geographical Indications Bill 2001, ther e is no special provision for higher level of 
protection for wines and spirits.  The wines and spir its are protected under, clause 2(9) as agricultural 
products or products of industry. 
Follow-up questions: 
 
 Please explain how Kenya ensures that interested parties can prevent the use of a 
geographical indication for wines and spirits that  do not come from the place indicated in the 
geographical indication even when accompanied by  expressions such as "kind", "type", "style", 
"imitation" or the like.  
 Kenya has a draft bill for geographical indications , which has to be tabled in Parliament for 
enactment.   Under clause 2(f) of the draft Bill, a geographical indication is defined as a description or a representation used to indicate the geographical origin s in the territory of a country or a region of 
locality in that territory where a given quality, reput ation or other characteristic, of goods or services 
are exclusively or essentially attributable to geographical environment, including natural factors, 
human factors or both.   When the Bill becomes law interested par ties could prevent the use of a geographical 
indication for wines and spirits that do not co me from the place indicated in the geographical 
indication even when accompanied by expressions such as "kind", "type", "style", "imitation" or the 
like.  IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 31 
 
 
 Please explain how Kenya ensures that interested parties can prevent the use of a 
geographical indication for wines or spirits that  do not come from the place indicated in the 
geographical indication, even when the origin of the goods is indicated. 
 As a follow-up to the answer to the firs t follow-up question above, any geographical 
indication for wines and spirits must indicate the geographical origin, in the territory of a country or a 
region or locality in that territory where a given quality or reputation or other characteristics of goods 
or services are exclusively or essentially attributable  to geographical environment, including natural 
factors, human factors or both.  11.  Please explain whether pre-existing trad emarks are protected against usurpation by 
geographical indications. 
Under Part (VI) on special provisions concerni ng marks and exceptions of the Geographical 
Indications Bill 2001. Clause 23 provides for exceptions  regarding prior users.  The clause provides: 
(1) Nothing in this Act shall prevent continue d and similar use in Kenya of a particular 
geographical indication of another country id entifying wines, spirits by any national 
or domiciliary of Kenya who has used that  geographical indication in a continuous 
manner with regard to the same or related goods or services in the territory of Kenya 
either: 
 
(a) for at least 10 years preceding 15 April 1994; or 
 
(b) in good faith preceding that date. 
 
(2) Where a Trademark has been applied for or  registered in good faith, or where rights 
to a Trademark have been acquired through use in good faith either: 
 
(a) before the date or entry into force of this Act; or   (b) before the geographical indication is pr otected in its country or origin, this 
Act shall not prejudice the registrability or the validity of  the registration of a trademarks, or the right to use a tr ademark, on the basis that such a 
Trademark is identical with, or similar to, a geographical indications. 
 
(3) Nothing in this Act shall apply in respect of a geographical indication of  any country 
with respect to goods or services for which the relevant indication is identical with 
their term customary in common language as the common name for such goods or 
services in Kenya or in respect of a geographical indication of any other country with 
respect to products of the wine for which the relevant indication with the customary 
name of a grape variety existing in Kenya as of 1 January 1995. 
 (4) Any request for relief made under Part III of  this Act is connection with the use or 
registration of a trademark must be presented within five years after the adverse use 
of the protected indication has become generally known in Kenya or after the date of 
registration of the Trademark in Kenya, provided that the trademark has been 
published by that date, if such date is ear lier that than the date on which the adverse 
use become generally known in Kenya and provided that the geographical indications is not used or registered in bad faith. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 32 
 
 
(5) This Act shall in no way prejudice the right  of any person to use, in the course of 
trade, that person's name or the name of  that person's predecessor in business, except 
where such name is used in such  a manner as to mislead the public. 
 
E. I
NDUSTRIAL DESIGNS  
12.  Please describe the procedure that must be followed to obtain protection for textile 
designs and cite to the relevant provisions of law or regulation. 
 There are not special provisions for the protec tion of textile designs separate from those of 
industrial designs in general. 
 
F. P ATENTS  
13.  Please describe in detail the way in which the patent law of Kenya implements Article 27 
of the TRIPS Agreement, indicating any excep tions provided for, and including details 
regarding the protection for micro-organisms a nd non-biological and microbiological processes 
and plant varieties.  Please cite to the relevant provisions of the law. 
 
 Under section 7 - 10 of the Industrial Pr operty Act, patents are available for any 
inventions whether products or processes, which are new, involve an inventive step and are 
industrially applicable. 
 Section 11 of the Act provides exceptions from patentability  which include: 
 
(a) plant varieties as provided for in the Seed and Plant Varieties Act, but not  
parts thereof or products of biotechnological processes; 
 (b) inventions contrary to public orde r,  morality, public health and safety, 
principles or humanity, and environmental conservation;  
 
 Section 11 of the Act provides that the following shall not be regarded as inventions for the purpose of  patent protection: 
 (a) discoveries or findings that are products or processes of nature where 
mankind has not participated in their creation (including animals, plants and 
micro-organisms) and scientific and mathematical methods and theories; 
  (b) methods for treatment of the human or  animal body by surgery or therapy, as 
well as diagnostic methods; except produc ts, in particular substances or 
compositions, or use in any of those methods. 
 
Micro organisms per se  are not patentable under the Kenya laws, but as stated under 
section 6(a) of the Industrial Property Act, micr o-organisms as found in nature are treated as 
discoveries, where mankind has not participated in th eir creation, and therefore not patentable.  This 
includes also animals and plants. 
Section 13(1) of the Act on patents relating to living matter, an invention concerns a 
microbiological process or the product thereof and involves the use of a micro-organism or self-
replicable material is patentable.  In this case, th e microbiological process is patentable or the product 
thereof is patentable, but not micro-organisms involved in the process in their natural state. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 33 
 
 
Non-biological processes are patentable in Kenya provided they are new, involve an inventive 
step and are industrially applicable and the inventi ons do not fall under the exceptions to patentability 
mentioned above. 
New plant varieties, are protected under the Seeds and Plant Varieties Actof the laws of 
Kenya.  Section 17 of the Act grants plant breeders rights to new  plant varieties that meet the three 
criteria for protection that is distinctiveness, uniformity and stability (DUS).   
Section 11 of the Industrial Property Act ex cludes plant varieties from patentability, except 
parts thereof or products or biotechnological processes. 
14.  Please describe in detail the rights pr ovided patent holders under the patent law of 
Kenya and cite to the relevant provisions of law. 
 
Under section 36 of the Industrial Property Act,  a patent holder has the right to preclude any 
person from exploiting the protected invention by any of the following acts; making, importing, offering for sale, selling and using the patented produc t.  Where the patent is in respect of a process, 
the patent holder is granted the right to preclude  any person from using the patented process or doing 
any of the acts mentioned above in respect to pr oducts produced by means of the patented process.  
15.  Please describe in detail any provisions in the laws of Kenya permitting unauthorized 
use of a patent, citing to the relevant provisions of law, and describe in detail the conditions under which such use can occur.    
 Unauthorised use of a patent is permitted under: 
 
(i) Compulsory licence under section 95 to 101;  and  (ii) Government use under section 104.  
  
Under sections 95, 96 and 97 of the Act com pulsory licences are available on the following 
grounds: 
(a) non-working of the invention both loca lly and by importation of the patented  
products; 
 
(b) working of patent does not meet the market demand; 
 (c) unreasonable terms of licensing by the patent holder and interdependence of patents; 
the Industrial Property Tribunal issues compulsory licences. 
 
Clause 72(1) and (2) of the Industrial Propert y Bill 2001, on compulsory licences for non-
working and similar reasoning: 
(a) At any time after four years from the filing date of an application or three years from 
the grant of a patent, whichever period last  expires, any person may apply to the 
Tribunal for a licence to exploit the patented  invention of the grounds that a market 
for the patented invention is not being supplied on reasonable terms in Kenya; 
 
(b) A non-voluntary licence shall not be granted if the owner of the patent satisfies the 
Tribunal that circumstances exist which ju stify the fact that the market for the 
patented invention is not being supplied, or  is not being supplie d on reasonable terms 
in Kenya. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 34 
 
 
Compulsory licences based upon interdependence of  patents, clause 73(1)-(4) of the Industrial 
Property Bill 2001, state: 
(1) Where a patented invention cannot be wo rked without infringing the rights derived 
from an earlier patent, the owner of the latte r patent may request  the Tribunal at any 
time for the grant of a compulsory licence w ith respect to the earlier patent to the 
extent necessary for the working of his i nventions, if the invention constitutes an 
important technical advance of considerable  economic significance in relation to the 
invention claimed in the earlier patent. 
 
(2) The owner of the first patent shall be en titled to a cross-licence on reasonable terms to 
use the invention claims in the second patent. 
 (3) The use authorised in respect of the fi rst patent shall be non-assignable except with 
the assignment of the second patent. 
 
(4) In this section, "earlier patent" or "first  patent" means a patent granted on an earlier 
application or benefiting from an earlier va lidity claimed priority date, and "later 
patent" or "second patent" sha ll be construed accordingly. 
 
Clause 74(1) of the Bill provides that, a com pulsory licence shall not be granted unless the 
person requesting the licence,  
(a) satisfies the Tribunal that he had asked the owner of the patent for a contractual 
licence but has been unable to obtain the licence on reasonable commercial terms and 
within a reasonable time; and  
(b) offers guarantees satisfactory to the Tr ibunal to work the relevant invention 
sufficiently to remedy the deficiencies or to  satisfy the requirements, which gave rise 
to his request. 
The above requirements shall be varied in  the case of a national emergency or other 
circumstances of extreme urgency, provided the owne r of the patent shall be so notified as soon as is 
reasonably practicable. 
Clause 75(1) of the Bill, in considering a requ est for a compulsory licence, the Tribunal shall 
decide whether a compulsory licence may be granted and shall then, if it decides in favour of the grant 
taking into account any terms agreed by the parties, pr oceed to fix the terms which shall be decried to 
constitute a valid contract between the parties and shade be governed by the provisions of contractual 
licences. 
In fixing the terms the Tribunal shall ensure that the compulsory licence: 
(a) is limited, in scope and duration, to th e purpose for which it was  authorised, and in 
the case of semi-conductor technology, shall only be for  public non-commercial use 
or the remedy a practice determined after a judicial or administrative process to be anti-competitive; 
 (b) is limited predominately for the supply of the domestic market; 
 
(c) does not entitle the license to grant furthe r licences, without the consent of the owner 
of the patent; 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 35 
 
 
(d) is non-exclusive; and  (e) provides for the payment to the owner of the patent of remuneration which is 
equitable with due regard to all the circ umstances of the case, including the economic 
value of the licence. 
 
Under clause 76 of the Bill, the compulsory licen ce is transferable and only with that part of 
the industrial undertaking or its goodwill, in which the relevant invention is used and no such transfer 
shall be valid until the consent of the Tribunal has been obtained. 
 Clause 77 of the bill provides that, a compulsory licence may be cancelled: 
 
(1) On application of any interested party, the Tribunal may cancel a compulsory licence 
if: 
 
(a) the licensee fails to comply with their terms of the licence; or 
 (b) the conditions which justified the grant of the licence have ceased to exist and 
are unlikely to recur; provided that the legitimate interests of the licensee are 
adequately protected. 
 
(2) On the application of the Minister, or on the application of the owner of the patent, 
the Tribunal may, cancel the compulsory li cence if, within two years from the grant 
of the licence, the licensee has not taken th e necessary steps to work the relevant 
invention sufficiently so as to remedy the deficiencies or to satisfy the requirements 
which give rise to his application for the said license. 
 
(3) On application of the owner of the pate nt or the licensee, the Tribunal may vary the 
terms of a compulsory licence if new facts jus tify the variation and in particular if the 
patentee has granted contractual licen ce or more  favourable terms. 
 
16.  What term of protection does the patent law of Kenya provide for patents?  Please 
describe any provisions for extension of the term of protection and cite to the relevant 
provisions of the law.  
According to Section 39 of the Industrial Property Act Cap 509, a patent term is seven years 
from the date of filing and may be  extended for  two terms of five  years each.   
 
 However, under clause 60, of the Industrial Prope rty Bill 2001, the term of a patent shall be 
20 years from the date of filing in conformity with Article 34 of the TRIPS Agreement. 
G. L
AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS  
17.  Please describe in detail the protection for layout-designs of integrated circuits provided 
under the laws of Kenya, including the term of pr otection, and cite to the relevant provisions of 
law. 
Kenya has no law on the protection of layout-designs for integrated circuit.  The layout - 
designs of integrated circuits Bill, 2001, has been drafted. 
 The object of the proposed Bill on layout desi gns of integrated circuits is to encourage 
investment, provide incentives for creation and to  encourage advancement of technology progress 
through acquisition of foreign tec hnology and for connected purpose. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 36 
 
  The Registrar of layout-designs of integrated circuits shall register original layout-designs 
upon the application for registration by the right holder.    A layout-design is considered to be original if it is the result of its creator's own  intellectual 
effort and is not common place among creators of layout-design and manufacturers of integrated 
circuits at the time of its creation.   Registration may only be applied for if the layout-design has not yet been commercially exploited, or has been commercially exploited for no t more than two years, anywhere in the world. 
 
 Protection under this Act shall not depend upon whether or not the integrated circuit, which 
incorporates the proposed layout-design, is  itself incorporated in an article. 
 
The protection under this Act shall have the effe ct that the following acts shall be unlawful if 
performed without the authorization of the right holder:   
(a) reproducing, whether by incorporation in an integrated circuit or not; (b) importing, selling or otherwise distri buting for commercial purposes the protected 
layout-design of an integrated circuit in which the protected layout-design is 
incorporated, or an article incorporating su ch an integrated circuit in so far as it 
continues to contain an unlawfully reproduced layout-design (clause 8 (1)  of the 
Bill). 
The effect of protection of a layout-design under the layout-design Bill does not extend to acts 
done for non-commercial purposes or for the sole purpo se of evaluation, analysis, research or teaching 
(clause 8 (2)). 
Protection of a layout-design shall be 10 years after the date of commencement of protection. 
(clause 9 (3) of the Bill). 
H. P
ROTECTION OF UNDISCLOSED INFORMATION  
18. Please describe in detail how the laws of Ke nya provide for the protection of undisclosed 
information as required by Article 39.2 of the TRIPS Agreement and provide citations to the 
relevant provisions of law.   
 Kenya is in the process of drafting a bill to protect undisclosed information 
 
19. Please describe in detail the manner in which protection is provided test data regarding 
pharmaceutical and agricultural chemical produc ts submitted to the government in order to 
obtain marketing approval in Kenya and cite to the relevant provisions of law. 
 
The Pharmacy and Poisons Act, Cap 244 of the laws of Kenya, has provisions for the 
Registration of Drugs or Pharmaceutical products. 
Test data submitted to the Regist rar is handled confidentially.  
 The Pest Control Products Act, Cap 346 of 1982, revised in 1985 regulates the importation, 
exportation, manufacture, distribution and use of pr oducts used for the control of pests and of the 
organic function of plants and animals and for connected purpose. 
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 37 
 
 
 The Pest Control Products Board administers th e Act.  Under sections 3 and 4 of the Act, the 
information submitted to the Secretary of the Boar d for registration of Chemical Products is not 
accessible to any third party without the authority of the owner.   
 Under section 12, any person who contraven es the provisions of section of 3 and 4 on 
confidentiality of information shall be guilty of an  offence and shall be lia ble to imprisonment for a 
term not exceeding two years. 
 
20. Are other applicants for marketing approval  for their own versions of a previously 
approved pharmaceutical or agricultural chemical products permitted to rely on data submitted 
by the earlier applicant?  If so, how long a peri od of exclusivity is given the earlier applicant 
before such reliance becomes possible. 
 
Under the two Acts mentioned in No19 above , the Pharmacy and Poisons Act and Pest 
Control Products Act for the Registration of Phar maceutical and Agricultural Chemical Product in 
Kenya, third parties do not have access to inform ation previously submitted for approval for the 
marketing of pharmaceutical or agricultural chemical products.   
I. E
NFORCEMENT  
21. Please describe in detail the manner in whic h the laws of Kenya provide for effective 
action against infringement of intellectual proper ty rights as required by Article 41 of the 
TRIPS Agreement.  Please also explain any delays  that may be associated with the enforcement 
of intellectual property rights.  
 The Commercial Division of the High Court deals with matters relating to intellectual 
property.  This division was set up two years ago in  order to expedite hear ing and determination of 
commercial cases.  Heavy workload at times causes delay that may be associated with enforcement of 
intellectual property rights.   
 
22. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order 
production of evidence necessary to substantiate  a party's claims where that party has been 
unable to obtain such evidence from the opposi ng party.  Please describe how the laws or 
regulations of Kenya provide this authorization,  citing to the relevant provisions of law or 
regulation.  
Section 119 of the Industrial Property Act giv es the Industrial Property Tribunal powers to 
make orders for the purposes of securing the attendan ce of any person, the discovery of production of 
any document, or the investigation or punishment fo r contempt of court, which the court has power to 
make. 
Clause 37 of the Copyright Bill 2001 provides for Anton Piller orders, which may be granted 
ex parte  and basically prevent the other pa rty from destroying any evidence.  
23.  Please describe in detail all of the civil remedies that are available to right holders under 
the laws of Kenya, citing to the relevant provisions of law or regulation. 
  Section 110 of the Industrial Property Act , section 5 of the Trade Marks Act and 
section 15(2) of the Copyright Act set out the civ il remedies available to rights holders such as 
injunctions, damages, taking of accounts, etc  
 IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 38 
 
 
24.  Please describe in detail the provision al procedures and remedies available to right 
holders under the laws of Kenya, citing to the relevant provisions of law and regulation, and 
indicate any condition under which a right holder may avail itself of those procedures and remedies. 
 
Section 110(1)(a) of the Industrial Property Act provides that the Industrial Property Tribunal 
may issue an injunction to prevent infringem ent where such infringement is eminent.  
 Clause 37 of the Copyright Bill 2001, provides fo r issuance of Anton Piller orders, basically 
to prevent destruction of any evidence.  
J. S
PECIAL REQUIREMENTS RELATED TO BORDER MEASURES  
25.  Please describe in detail the procedures und er the laws of Kenya that provide for border 
enforcement at least for trademark counterfei ting and copyright piracy, identifying the 
competent authority and citing to the relevant provisions of law or regulation.  
 
Goods which are copyrighted, trademarked or pa tented are considered to be restricted and 
would therefore be governed by Section 14(2) a nd 15(2)(a) and the Eighth Schedule of the Customs 
and Excise Act. These can also be gazetted by the Minister in accordance with the provisions of 
section 15 of the Customs and Excise Act. 
The competent authority is the Customs and Excise Department.  Under the Customs and 
Excise Act, the Commissioner of Customs and Excise has powers to impound goods that are 
prohibited or restricted under any law for the time in being in force in Kenya.  By the right holder applying to the Commissioner of Customs and Excise giving details of the consignment suspected to be infringing, the Commissioner, can suspend releas e of the goods on the basis of the said provisions. 
Section 185 contains provisions for th e offences on this category of goods.  
26.  Please indicate if border enforcement is ava ilable to owners of other forms of intellectual 
property and, if so, please describe the procedur es and remedies available in relation to each 
form of intellectual property, citing the relevant provisions of law.  
The relevant provisions of the law governing all forms of intellectual property are sections 14 
and 15 of the Customs and Excise Act as prohibited or restricted goods. 
 The procedure to be followed should be dete rmined by the Competent Authority appointed by 
the Minister but in all cases, the Commissioner of Customs and  
 Excise should be notified of the existence of the rights.  Under section 185, the offender is liable to a fine not exceeding five hundred  thousand 
shillings or imprisonment for a period not exceeding three years or both.  
27.  Article 58 of the TRIPS Agreement sp ecifies procedures to be followed where the 
competent authorities can act ex officio.  Plea se explain whether the competent authorities in 
Kenya are empowered to act ex officio and, if so , please identify the intellectual property areas 
subject to ex officio action.  
The Eighth Schedule to the Customs and Exci se Act empowers the Commissioner to deal 
with all prohibitions under any law for the time bei ng in force in Kenya, although there are no special 
provisions applicable to ex officio actions. IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 
Page 39 
 
 
All forms of intellectual property provided fo r under the laws of Kenya can be treated as 
prohibited or restricted goods provided for under sections 14, 15 and the Eight Schedules of the 
Customs and Excise Act.  
K. C RIMINAL PROCEDURES  
28.  Please describe in detail how the laws of Kenya implement Article 61 of the TRIPS 
Agreement that requires Members to have cri minal procedures and penalties, including 
imprisonment and/or monetary fines sufficient to ac t as a deterrent, at least for cases of wilful 
trademark counterfeiting and copyright infringeme nt on a commercial scale.  Please cite to the 
relevant provisions of law and regulation. 
  Under section 58 of the Trade Marks Act, fo rging a Trademark or sale or importation of 
goods or performance of services with forged regist ered Trademark constitute an offence liable to a 
fine not exceeding K Sh 10,000 and or to imprison ment for a term not exceeding five years.  Under 
the proposed Trademark Amendments the fine  has been increased from K Sh 10,000 to 
K Sh 200,000.00. 
  Under section 16 of the Copyright Act, anybod y who makes for sale or hire any infringing 
copy, distributes an infringing copy or imports into  Kenya otherwise than for his private and domestic 
use is guilty of an offence punishable by a fine not exceeding K Sh 200,000 and/or imprisonment for a 
term not exceeding five years.  Under the Copyri ght Bill, 2001, the penalty has been increased to 
K Sh 800, 000.  The term of imprisonment has been increased to ten years.  
 
29.  Article 61 also requires that remedies in a ppropriate cases include the seizure, forfeiture 
and destruction of infringing goods and any materials and implements the predominant use of which has been the commission of the offence.  Please describe the provisions in the laws of 
Kenya that provide for such remedies, and descri be the circumstances in which those remedies 
would be imposed, citing to the relevant provisions of law or regulation.    
Under section 58H(1) of the Trade Marks Act, pr ovides that the court may declare any goods 
in respect of or by means of which the offenc e was committed to be forfeited to the Government 
unless the owner shows cause to the contrary.  Th e police also have power to seize any infringing 
goods under the inserted section 58H(2) of the Trade Marks Act. 
  Under section 16(7) of the Copyright Act, the court before which a person is charged with 
Copyright infringement, is required to order that any article in the possession of the infringer which 
appears to the court to be an infringing copy or to be an article used or inte nded for to be used for 
making infringing copies be destroyed or delivered up to the owner of the copyright, or otherwise 
dealt with as the court may think fit.   Penalties, forfeitures and seizures are also provided for under the Customs and Excise Act, 
section 195-204. 
 
30.  Article 61 also indicates that Members may provide for criminal procedures and 
penalties in cases of wilful infringement of other forms of intellectual property.  Please describe any provisions of the laws of Kenya that provide for such procedures and remedies, citing to the relevant provisions of law or regulation.  
Under section 113 of the Industrial Property Act, infringement is a criminal offence 
punishable by a fine of not less than K Sh 10,000  and not exceeding fifty thousand shillings and or 
imprisonment for a term not less than three years and not more than five years.  There are no 
provisions in the Act that make infringement of  Industrial designs or utility models a criminal IP/Q/KEN/1, IP/Q2/KEN/1, 
IP/Q3/KEN/1, IP/Q4/KEN/1 Page 40 
 
 offence.  However under the proposed Industrial Pr operty Bill, 2001, infringement of an industrial 
design or utility model will be punishable like in fringement of a patent as provided under clause 109 
of the Bill.   
 
L. S
TATISTICAL QUESTIONS  
31.  Please provide statistical information related  to civil copyright, trademark, geographical 
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement for 2000, including the number of ca ses filed;  injunctions issued;  infringing 
products seized;  infringing equipment seized;  cases resolved (including settlement); and the 
amount of damages awarded. 
 
Although a number of cases were filed in court in the year 2000, the exercise of compiling the 
requested statistics is not yet complete. The requi site information will be provided as soon as the 
information is available. 
 
32.  Please provide statistical information rel ated to criminal enforcement in the area of 
copyright piracy and trademark infringement  for 2000, including the number of raids, 
prosecutions, convictions, and the amount of fin es and/or jail terms (including whether the fines 
were paid and whether the jail term was actu ally served or was suspended) and any other 
information establishing that the criminal system operates effectively to deter copyright piracy 
and trademark counterfeiting.  
 
 Although a number of cases were  filed in court in the year 2000, the exercise of compiling the 
requested statistics is not yet complete.  The re quisite information will be provided as soon as the 
information is available. 
 
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