Protecting Your Brand in Kenya: Beyond Trademark Registration

Brand protection in Kenya goes beyond trademark registration at KIPI. A registration gives you the legal right to exclusive use of your mark, but enforcing it requires active monitoring, enforcement through the Anti-Counterfeit Authority (ACA) under the Anti-Counterfeit Act, 2008, and customs recordation to intercept infringing goods at the border. Several of these tools sit with a different agency, or follow a different process, than is commonly assumed.

Brand Protection in Kenya: The Role of the ACA

The ACA, established under the Anti-Counterfeit Act, No. 13 of 2008, is responsible for combating trade in counterfeit goods, with inspectors empowered to inspect and seize suspected counterfeit goods. Section 32 makes it an offence to possess, manufacture, sell, expose for sale, distribute, import, transit, transship or export counterfeit goods in the course of trade, among other acts. For brand owners the ACA is a critical enforcement partner, but its resources are finite, and a mark that has never been recorded with it or flagged to it is less likely to receive proactive attention.

Laying a Complaint Directly With the ACA

Section 33 allows a holder of an intellectual property right, their successor in title, licensee or agent to lay a complaint with the Executive Director where they have reasonable cause to suspect that a section 32 offence has been, is being or is likely to be committed. The complainant must furnish the prescribed information showing, prima facie, that the goods are counterfeit. This route is distinct from customs recordation and is available for goods already in the Kenyan market, so a brand owner who has identified a domestic counterfeiting operation should use it directly. See our guide to enforcement through the Anti-Counterfeit Authority.

Customs Recordation: Filed With the ACA, Not KRA

Section 34B(1) of the Act requires trademarks relating to goods to be imported into Kenya, irrespective of the place of registration, to be recorded with the Agency in the prescribed manner if the registration is current. Under regulation 3 of the Anti-Counterfeit (Recordation) Regulations, 2021, the application is made by the owner in Form ACA1B with the prescribed fee, and the Authority must notify the applicant in writing of approval or denial within thirty days of receiving it. The application goes to the ACA, not to the Kenya Revenue Authority. KRA is the enforcement arm at the physical border, but the recordation relationship sits with the ACA. A brand owner who has only ever engaged KRA about counterfeit imports, without filing an ACA1B application, has not yet activated this protection. Our guide to customs recordation of trademarks in Kenya covers the process in detail.

Online Enforcement

E-commerce platforms generally operate intellectual property complaint mechanisms that let brand owners report infringing listings and request takedowns. A report is more likely to succeed if it shows the registered mark and the specific infringing use, rather than merely similar or competing products. For domain names, the Uniform Domain-Name Dispute-Resolution Policy (UDRP), administered by WIPO and others, offers a faster and cheaper route than court for recovering domains that incorporate your trademark in generic top-level domains. A .ke domain dispute is handled under the registry’s own dispute process rather than the UDRP, so confirm the current KeNIC procedure before filing.

Brand Protection in Kenya: Cease and Desist

A formal cease and desist letter from an advocate puts the infringer on notice, demands that the infringing activity stop and sets a deadline. Where the infringer did not know the mark was registered, a well-drafted letter often resolves the matter without formal proceedings. Even where it does not, it creates a documented record of notice that strengthens a later civil claim or ACA referral if the conduct continues.

Criminal Penalties

Section 35(1) sets the penalties for a section 32 offence. A first conviction carries imprisonment of up to five years, or a fine, in respect of each article or item involved, of not less than three times the prevailing retail price of the genuine goods, or both. A second or subsequent conviction carries imprisonment of up to fifteen years, or a fine of not less than five times the prevailing retail price, or both. Under section 35(2), a person convicted of an offence under section 24 (which includes obstructing an inspector) or section 31 is liable to imprisonment of up to three years, or a fine of up to two million shillings, or both. Because the main fine is tied to retail value per article, it scales with the volume and value of counterfeit goods involved.

Building a Brand Protection Programme

An effective programme combines: active monitoring of the market and online platforms for infringing use; a consistent protocol for investigating and responding to suspected infringements; a current ACA recordation, updated as products and packaging evolve; working relationships with the ACA and law enforcement where the scale of counterfeiting warrants criminal enforcement; and staff training to spot counterfeits in your own supply chain and retail channels. Consistent enforcement builds deterrence. Pursuing some infringers while ignoring others invites further infringement and can weaken your position in a later dispute over whether the mark has been actively defended.