This Is An Act Of Parliament To Provide For The Promotion Of Inventive And Innovative Activities, To Facilitate The Acquisition Of Technology Through The Grant And Regulation Of Patents, Utility Models, Technovations And Industrial Designs, To Provide For The Establishment, Powers And Functions Of The Kenya Industrial Property Institute And For Purposes Incidental Thereto And Connected Therewith.
According to Industrial Property Act 2001, an industrial design is defined as "any composition of lines or colours or any three dimensional form whether or not associated with lines or colours, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft" .
In other words an industrial design is concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament. It must be understood that an industrial design DOES NOT protect the method of construction or the function of the article.
Visual appeal is one of the considerations that influence the decision of consumers to prefer one product over another, particularly in areas where a range of products performing the same function is available in the market. If the technical performance of the various products offered by different manufacturers is relatively equal, aesthetic appeal, along with cost, will determine the consumer's choice. The legal protection of industrial designs, thus, serves the important function of protecting one of the distinctive elements by which manufacturers achieve market success.
By rewarding the creator for the effort, which has produced the industrial design, the legal protection accorded thus serves as an incentive to the investment of resources in fostering the design element of production.
An industrial design registered in Kenya is effective only in Kenya but the Kenyan application can be used to establish a priority date for a separate application made in another country.
The Kenya Industrial Property Institute is stablished under Section 3 of the Industrial Property Act.
Its functions are enumerated under Section 5 of the Act as follows:
1. Consider application for and grant of industrial property right
2. Screen technology transfer agreements and licenses
3. Provide to the public ,industrial property information for technological and economic development
4. Promote inventiveness and innovativeness in Kenya
REGISTRATION OF AN INDUSTRIAL DESIGN
It is important for a designer to understand from the start the conditions a design must fulfill for it to be registered. With this knowledge, a designer can then avoid including features or shape that would be objectionable in order for the application to be processed in a timely manner.
Section 86(1) provides that an industrial design is registrable if it is new: (2) provides that an industrial design shall be deemed to be new if it has not been disclosed to the public anywhere in the world,by publication in tangible form or in Kenya by use or in any other way ,prior to the filing date or where applicable ,the priority date of the application for registration.
Section 87 of the Industrial Property’s Act provide as follows:
Any person wishing to register an industrial design shall send to the institute:
An application in the prescribed form
A power of attorney where the person is represented by an agent
Drawings ,photographs or other graphic representation of the article embodying the industrial design and an indication of the kind of product for which the industrial design is to be used ; and
The prescribed fees
The request shall be accompanied by a specimen of the article embodying the industrial design
Where the applicant is not the creator, the request shall be accompanied by a statement justifying the applicant’s right to the registration of industrial design.
Two or more industrial designs may be the subject of the same classification provided that they relate to the same class under International classification or to the same set or composition of article
The applicant may at any time withdraw an application lodged under this section
The Managing Director of the institute shall, if satisfied that an application meets the requirement of this section and of section 84 and 86 ,register the industrial design and issue a certificate of registration to the applicant.
Section 88(1) of the Industrial Property Act subject to subsection 2,provides that the duration for registration of an industrial design shall expire at the end of the fifth year following the date of filing of the application for registration.
Industrial Property tribunal (IPT)
The IPT is established under Section 113 of the Industrial Property Act (IPA) for two main purposes viz;
· Hearing and determining appeals where provision is made for appeals from the decisions of the Managing Director under the IPA and
· Exercising the other powers as conferred on it by the IPA.
The IPT consists of a chairman and four-members appointed by the Minister for Industrialization as provided under section 113 (1) of the IPA.
The chairman of the Tribunal should be a person who has been a judge or who is qualified to be appointed as a judge of the High Court of Kenya i.e. a person with at least ten years’ experience as a superior Court judge or professionally qualified Magistrate; or at least ten years’ experience as a distinguished academic or legal practitioner or such experience in other relevant legal field.
At least two members of the Tribunal should be persons who have, for not less than seven years, been qualified and entitled to practice as advocates in Kenya and the other two members must have experience and/or expertise in industrial, scientific and technological fields.
The sittings of the tribunal are discretionary as it sits at such times as it may appoint.
The IPT’s jurisdiction extends to various disputes relating to Patents, Industrial Designs, utility models and Technovations .
SECTIONS “105. Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”
“106. On the request of the owner of the patent or the registered utility model or
industrial design, the Tribunal shall grant the following relief—
(a) an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
(b) damages; or
(c) any other remedy provided for in law.”
The IPT has judicial powers to make any order for the purposes of securing the attendance of any person, the discovery or production of any document, or the investigation or punishment for any contempt of Court, which the High Court has power to make.
In exercise of its jurisdiction and powers, the IPT has rendered several landmark decisions particularly on the standard of protection of Industrial Designs where it has sought to widen public space for innovation. For instance, in the case of Power Technics Limited –v- Power Engineering International Limited the Requestor, Power Technics Limited filed a request under Section 106 of the Industrial Property Act seeking an injunction to prevent infringement of its registered Industrial Design No. 296. In its Statement of Case, the Requestor stated that it had designed Sectionalized tapered columns for street lighting sometime in 1998 and supplied them to various customers in Kenya and Tanzania. It was alleged that the Respondent had infringed the Industrial Design No. 296 by making, manufacturing and selling similar or identical streetlights. The Respondent’s reply was that the Requestor’s invention in Design No. 296 was not obvious, as it did not involve any inventive step having regard to what was common knowledge at the date of the application.
It was further submitted that the alleged invention was in the public domain since it was neither new nor original, the invention having been disclosed to the public and published in various catalogues. The Industrial Property Tribunal in finding that the Respondent had not infringed the design expunged Industrial Design No. 296 from the register stating that the evidence showed that tapered Sectionalized street poles were in existence in Kenya and elsewhere prior to Design 296 being registered. The Tribunal concluded that the evidence on record left no doubt that the invention embodied in Design 296 was in the public domain well before it was registered.
Any party to the proceedings before the Tribunal may appeal from any order or decision of the Tribunal, to the High Court and upon the hearing of such an appeal the High Court may -
a) confirm, set aside or vary the order or decision in question;
b) remit the proceedings to the Tribunal with such instructions for further consideration, report, proceedings or evidence as the High Court may deem fit to give;
c) exercise any of the powers which could have been exercised by the Tribunal in proceedings in connection with which the appeal is brought; or
d) Make such order as it may deem fit as to the costs of the appeal or of earlier proceedings in the matter before the Tribunal.
Unfortunately, the High Court has not lived up to expectation in this regard and has, according to critics, shied away from addressing itself on technical IP issues involving Industrial Designs and Patents cases brought before it on appeal. Critics have argued that such cases brought before the High Court on appeal end up being returned to the IPT under the High Court’s powers to ‘remit proceedings to the Tribunal with such instructions for further consideration, report, proceedings or evidence as the High Court may deem fit to give.’
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