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Legal challenges facing franchising in Kenya

Anthony Okulo 1

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Introduction

 This presentation is a general overview of the Kenyan laws that relate to Franchising and Licensing agreements.  Anthony Okulo: Advocate High Court of Kenya Anthony Okulo 2

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Topics of Discussion

            Innovation process Franchising & Licensing Transfer of technology Trademarks Act (Cap 506) Copyright Act 2001 Traditional knowledge Ownership Originality Infringement Remedies or Relief Recommendations Conclusion Anthony Okulo 3

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Innovation process

INNOVATION PROTECTION ( REGISTRATION ) IP database COMMERCIALISATION PROTECTION AGAINST INFRINGEMENT TRANSFER / LICENSING Anthony Okulo 4

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Franchising and licensing

 Franchise: the sole right granted by the owner of a trademark to engage in business or to sell goods or services in a certain area.

 License: revocable permission to commit an act that would otherwise be unlawful Anthony Okulo 5

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Transfer of technology

 Technology: the systematic knowledge for the manufacture of a product, the application of a process or the rendering of a service.

 Technology can be transferred by an assignment or license Anthony Okulo 6

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Trademarks Act (Cap 506)

 Trademark: a mark or sign used in relation to goods and services for the purpose of indicating a connection in the course of trade between the goods or services and the registered owner Anthony Okulo 7

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Copyright Act 2001

 Copyright: a property right in an original work of authorship (literary, musical, artistic, photographic or audiovisual) fixed in any tangible medium of expression giving the holder the exclusive right to reproduce, adapt, distribute, perform or display the work Anthony Okulo 8

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25/04/2020 http://www.biashara.biz/pd_tusker.cfm# Anthony Okulo 10

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Traditional knowledge

   WIPO

Tradition based

literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks; names; symbols; undisclosed information; and all other tradition based innovations and creations resulting from intellectual activity.

Tradition based

: knowledge transmitted from generation to generation Anthony Okulo 11

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Folklore



Copyright Act

: folklore is literary, musical or artistic work presumed to have been created within Kenya by an unidentified author which has been passed on form

generation to generation

and constitutes a basic element of traditional heritage Anthony Okulo 12

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Ownership

 Trademarks, patents, utility models must be registered. Registration certificate is poof of ownership  Copyright: the owner is the person who first makes or creates the work  TK: passed on from generation to generation and collectively owned Anthony Okulo 13

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Originality

    Trademarks: must relate to a particular class of goods and services e.g.. Elephant head Copyright: sufficient effort expended on the work to give it an original character. Work must be fixed or reduced to material form Jewani –v- Going out magazine & another [2002] 1 KLR proof of sufficient work by way of photography, development, design , artwork, colour separation and publication confer on the works an original character TK: constantly evolving in response to changing environment Anthony Okulo 14

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Infringement

     Copyright Economic rights: exclusive rights which allow the owner of the rights to derive financial reward from the use of his/her works Moral rights: right to claim authorship of the work and to object to any mutilation of or derogatory action in relation to the work.

Universal Declaration of Human Rights

he is the author Article 27 : ‘ everyone has the right to protection of the moral and material interests resulting from scientific, literary or artistic production of which TK: unauthorised reproduction [ ownership??] Anthony Okulo 15

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Infringement

 

Designers Guild –v- Russell Williams

(H.L.) [2001] ALL ER 701: the owner complains that the defendant has copied all or a substantial part of the copyright work. the reproduction may be exact or it may introduce deliberate variations

Alternative Media Ltd

is a proprietary right.

–v- Safaricom Ltd

HCC 263 of 2004 infringement of copyright does not mean reproduction in its original form it includes the translation or adaptation of original work. innocent infringement is no defence as copyright Anthony Okulo 16

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Remedies or Relief

 Damages  Injunctions  Accounts  Delivery  Destruction  Royalties  Inquiry Anthony Okulo 17

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Recommendations



Trade Practices Act

 Specialist IP Magistrates and Judges  Know your IP rights  Enforce your IP rights  Education on different forms of IP rights (WIPO Academy)  IP inspectors Anthony Okulo 18

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Conclusion

  Kenya is ready for local and international franchising the business sector must take advantage of the opportunity

University of London Press Ltd –v University Tutorial Press Ltd

[1916] 2 CH 609 : ‘… there remains the rough practical test that what is worth copying is worth protecting..’ Anthony Okulo 19