A lot of Kenyan businesses are coming up with products and services that are not only winning national acclaim but a lot of global acclaim too. Brands like MPESA have won several global awards and are an indicator that Kenyan businesses are coming up with innovative services and products for the global market.
Some businesses are rapidly expanding regionally and as they expand they export innovative products and services to other countries. It is therefore important for such businesses to protect their innovative products and services not only locally but also in the foreign jurisdictions in which they intend to do business. This means that before you expand your business to a foreign country, first make sure you have sought legal protection for your innovations in the foreign country to minimise incidences of counterfeits and riding on goodwill. It is also important for inventors in the science and technology field to seek patent protection in as many foreign countries as possible where the innovation is commercially viable. I came across a very interesting situation recently where a global giant wanted to enter the Kenyan market and infact did so without having protected its brand via trademark. One of its local competitors riding on this company’s goodwill started manufacturing goods with a similar name and similar brand. The global giant on finding this out sought to institute trademark infringement proceedings however could not do so because they had not registered their brand here in Kenya. Therefore to protect your brand in the global market it is important to seek intellectual property right protection whenever you are exporting your goods and services. The nature of intellectual property rights is that there is a territorial limit.
However sometimes it is possible to get protection in many different countries by filing one registration in Kenya. This is however dependent on the type of protection sought and if Kenya is a signatory of some of the IP treaties that cover simultaneous territories.
In respect to copyright protection for example if you are a resident in a country which is a party to the Berne Convention for the Protection of Literary and Artistic works or if your country is a member of the World Trade Organization which is bound by the TRIPS agreement and have published your work in one of the member countries then your work is automatically protected in member states.
How to protect your IP in foreign jurisdictions
One way of doing this is by seeking protection in the country of export through its intellectual property office. You will be required to pay the fees as prescribed by the national IP office in question. This system is more desirable if you are exporting your innovations to only a few number of countries. Then you will seek protection in the national office of each country of export.
However if you are exporting your goods to a region and these regions have regional IP agreements, then it would be better to get protection via the regional offices rather than the national IP offices. Some examples include the European Patent Office, the African Regional Industrial Property Office ( ARIPO-which is for English speaking African countries), African Intellectual Property Office ( OAPI-for French speaking African countries), Benelux Trademarks Office for Belgium, Netherlands and Luxembourg, Patent Office of the Co-operation Council for the Arab States of the Gulf . Each of these offices specifies what kind of IP right it can grant regionally for example ARIPO offers regional protection for patents, trademarks and industrial designs while the Gulf Patent Office handles only patents.
International protection is available whereby you file just one application and your innovation is protected globally by that single filing. It is possible to protect your patent globally under the PCT system and get protection for your patent in more than 100 countries. When you do a national filing through KIPI your patent is only protected in Kenya. However when you do it under PCT you get protection in more countries. The Madrid system applies for international protection of trademarks while the global protection for industrial designs is done through the Hague Agreement.
However it is important to note if the country in which you seek to protect your IP right is a signatory to some of the WIPO Treaties allowing for international applications.
When you protect your IP globally the benefits include limiting the risk exposure for your innovations due to infringements or counterfeit. It also enables you to build your brand worldwide and gain high repute as IP rights give you an almost monopolistic advantage over your competitors. Marks that are in IP known as “well known marks” are mostly those with global IP protection.
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