Africa: Kenyan anti-counterfeiting legislation is constitutional

In the recent case of Paul Nduba v Hon Attorney General and The Anti-Counterfeit Agency, a Kenyan court ruled that the provisions of the Kenyan Anti-Counterfeit Act (ACA) are constitutional. The facts were that the Anti-Counterfeit Agency had conducted a raid on a shop and seized what it believed was counterfeit clothing. Brands involved included Puma, Nike, Adidas and Jeep. The shop owner was present during the raid, the goods seized were itemised, and the shop owner signed an inventory. The shop owner then went to court to challenge the legality of the search and seizure.

What the court had to decide was whether the provisions of the ACA are constitutional. Judge Odero started off by making the point that, although the shop owner had not advanced any arguments on the issue, it did need to be considered, because Kenyan courts take the view in constitutional matters determining the substance of the matter takes precedence over formal procedural issues. After pointing out that there is a rebuttable presumption that a statute complies with the Constitution, the judge decided that the provisions of the ACA are constitutional. In particular the judge ruled that:

• The search and seizure provisions in the ACA do not breach the right to privacy guaranteed under Article 31 of the Constitution. As the judge pointed out, the right to privacy is not absolute, and it can be limited by statute law if "the limitation is reasonable and justifiable…taking into account all relevant factors". These factors include the nature of the right, the reason and importance of the limitation, and the need to ensure that rights and freedoms do not prejudice the rights and freedoms of others.

In addition, Article 40(5) of the Constitution says that "the state shall promote and protect the intellectual property rights of the people of Kenya". The judge went on to say that the ACA was passed to realise this constitutional right to protection of intellectual property. The sections of the ACA that allow inspectors to enter premises where it is suspected that there may be counterfeit goods, search the premises, take steps to terminate dealings, seize, detail and remove goods, are "perfectly in line with the objective of the Act in protecting intellectual property". There was no invasion of the right to privacy.

• The mere fact that the IP owners had not lodged complaints did not make the raid unlawful. As the judge said: "It is envisaged that in certain circumstances an inspector may act without there having been any prior complaint." Section 34 of the ACA says that inspectors can take steps on their own initiative if they suspect counterfeiting, provided that the IP owner is subsequently notified.

• The raid was not illegal simply because no charges had been laid against the shopkeeper following the raid. That is because Section 28(1) of the ACA grants an inspector a period of three months to prefer a charge, and this period had not yet elapsed.

IP owners will be heartened by this decision. They may also be amazed to hear that the Kenyan constitution specifically protects intellectual property.

Chris Walters

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