It is time the law on unfair trade practices was amended to include intellectual property rights infringement.
IP infringement is common in Kenya’s market where unscrupulous business people seek to ride on the goodwill of established brands. According to the Trademarks Act, no action can lie for infringement of a trademark unless the mark is registered.
Infringers are persons who seek to ride on the goodwill of an established brand by producing and selling goods that have an identical or similar name/logo to the established brand.
An example in the electronics industry is the infringement of the brand “ Sony T.V” by “Sqny T.v”. The brand name looks similar and it is intended to deceive the public that the two products are the same yet they are not.
In Kenya, the remedies for infringement are contained in the Trademarks Act and the registered owner of the mark can recover damages from an infringer.
However, despite the provisions in the Trademarks Act, IP infringement has not yet been specifically classified as an unfair trade practice in Kenya unlike Rwanda whose IP Act classifies IP infringement as an unfair trade practice.
An unfair trade practice is the usage of fraudulent, deceptive and unfair methods to obtain business and includes an action such as misrepresentation.
IP infringement is an unfair trade practice as the infringer seeks to gain profit by deceiving the public about the identity of the goods.
It is important to include IP infringement as a component of unfair trade practice because this will make it easier for the holder of genuine IPR to have additional courses of action in the event of infringement.
If IP infringement is included as an unfair trade practice, then this means that in addition to remedies under the Trademarks Act and judicial remedies, the holder of original products can additionally recover from an infringer through the unfair trade practices legal regime.
There is a tribunal established to handle incidence of unfair trade practices and this tribunal has powers to make certain decisions. For example it can order discontinuance of certain unfair trade practices and it can issue interim orders.
The Competition Authority has powers to investigate incidence of unfair trade practice and has powers to enter and search premises upon which such acts take place. I believe enforcement of IPR would be heightened if IPR infringement was classified as an unfair trade practice under the Competition Act.
There is a study that sets out the benchmark of what is considered to be ideal IPR legislation in any country and the study recommends that IPR should be enforceable under competition laws as well.
Should the competition law be amended to include IPR infringement then owners of registered IPR can pursue additional remedies which are not currently available to them.