Criminal procedures and penalties for infringement of intellectual property rights in Kenya

Abstract

Article 61 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement obliges members to put in place criminal procedures and penalties for cases involving willful trade mark counterfeiting and copyright piracy on a commercial scale through rem- edies which include imprisonment and/or monetary fines in ways sufficient to act as deterrent consistent with the members’ categorization of crimes on the basis of gravity. Further, the article obliges members, in appropriate cases, to expand the remedies available to include seizure, forfeiture and destruction of infringing goods and materials used in the commission of the offence. For intellectual property rights (IPRs) other than trade marks and copyright, article 61 of the TRIPS Agreement urges, but does not oblige members, to make available criminal procedures and penalties. Indeed, in its preamble, the TRIPS Agreement makes it clear that IPRs are private rights, while in article 41(5), the Agreement clarifies that it does not in any way call upon members to make special consideration for enforcement of laws relating to IPRs as compared to general enforcement of law in a member’s territory. In essence, in the language of its article 61, the TRIPS Agreement incorporated a compromise that rec- ognized the potential utility of criminal procedures and penalties for safeguarding the interests of owners of IPRs while remaining cognisant of the potential costs that could be imposed upon members, especially devel- oping countries, in setting up enforcement mechanisms financed by public resources for the protection of pri- vate rights which are predominantly owned by enter- prises based in developed countries. Under article 1(1), the TRIPS Agreement accords a member the freedom to choose the method best suited to implement the Agreement’s provisions within its own legal system and practice. Article 61 provides room for members to draft laws and policies that meet their local contingencies. This article seeks to evaluate the manner in which Kenya has complied with its obligations under article 61 of the Agreement and the extent to which it has taken advant- age of the flexibilities incorporated therein. In particu- lar, we review the laws relevant to the protection and exploitation of IPRs in Kenya, also in light of the feed- back provided by key stakeholders in the prosecution of offences relating to IPRs in Kenya (officers from the Kenya Copyright Board, the Anti-Counterfeit Agency and the Office of the Director of Public Prosecutions).