Trademarks constitute one of the most valuable classes of intellectual property rights for businesses operating in Kenya. They ensure commercial distinctiveness, safeguard goodwill, and protect consumers from deception in the marketplace. The integrity of trademark protection depends on effective enforcement, both through civil mechanisms and through criminal sanctions designed to deter unlawful use and counterfeiting.

Kenya’s legal regime provides a robust framework for prosecuting trademark offences, drawing from the Trade Marks Act (Cap. 506), the Anti-Counterfeit Act (No. 13 of 2008), the Penal Code, and customs legislation. This article examines the key trademark offences in Kenya, the corresponding penalties, enforcement agencies, and practical considerations for rights holders.

1. Legal Foundations of Trademark Offences in Kenya

Trademark offences are primarily anchored in three legislative instruments:

• Trade Marks Act (Cap. 506) – criminalises the unauthorised use, falsification, and imitation of registered marks.
• Anti-Counterfeit Act (2008) – addresses counterfeit goods bearing protected trademarks and prescribes stringent penalties.
• Penal Code (Cap. 63) – penalises acts involving false trade descriptions and deceptive representations.
• EACCMA – East African Community Customs Management Act – empowers customs authorities to seize infringing goods at points of entry.

Combined, these statutes create a comprehensive enforcement ecosystem targeting misconduct that undermines trademark rights.

2. Key Trademark Offences in Kenya.

2.1 Unauthorised Use of a Registered Trademark (Section 58, Trade Marks Act)

It is an offence to use, apply, or affix a registered trademark without the registrant’s consent. This includes use on packaging, labels, advertising materials, or digital platforms.

Scope:

• Imitating a registered mark to sell similar goods.
• Using identical or confusingly similar marks to exploit goodwill.
• Displaying or offering counterfeit-branded goods for sale.

2.2 Counterfeiting and Dealing in Counterfeit Goods (Section 32, Anti-Counterfeit Act)

Counterfeiting involves manufacturing or producing goods that imitate a protected trademark without authorisation. The Act criminalises:

• Manufacture of counterfeit goods
• Importation, exportation, or transit of counterfeit goods
• Distribution, sale, or possession for sale
• Possession of materials used for counterfeiting

2.3 Falsification or Alteration of a Trademark

Any falsification, alteration, or reproduction of a mark with intent to deceive constitutes a criminal offence. This includes:

• Altering original packaging to misrepresent the origin
• Forging holograms, seals, or certification marks
• Reusing branded containers to market substandard goods

Returns or re-labelling practices common in grey markets can also escalate into criminal liability where the intention to deceive is established.

2.4 Applying False Trade Descriptions (Section 102–105, Penal Code)

A false trade description refers to misleading representations about:

• Manufacturer
• Quality
• Origin
• Material composition
• Endorsement or certification

Example: Labelling electronics “ORIGINAL SAMSUNG” when they are counterfeit imports. This protects consumers against fraudulent commercial practices.

2.5 Importing or Dealing in Goods with Infringing Labels or Packaging

Importing, distributing, or selling goods whose packaging bears a forged or deceptive mark is a separate offence under the Trade Marks Act and Anti-Counterfeit Act.

This includes:

• Selling goods with tampered packaging
• Manufacturing counterfeit labels
• Stocking goods with misleading branding

Knowledge is not always required, possession of such goods without reasonable excuse may still trigger liability.

2.6 Using Another’s Trademark as a Corporate Name, Business Name or Domain

While often a civil infringement, misuse may amount to a criminal offence where deception of the public is proven. Example: Registering a business named “Nike Footwear Kenya” without authorisation.

Where misuse is intended to defraud, the Penal Code provisions on false pretences may also apply.

2.7 Possession of Counterfeit Manufacturing Tools or Instruments

Possessing printing plates, moulds, dies, or digital assets used for replicating registered trademarks is a standalone offence.

Penalties mirror those of counterfeiting, reinforcing the deterrence of manufacturing-level infringement.

3. Enforcement Mechanisms and Competent Authorities

Kenya employs a multi-agency enforcement model comprising:

3.1 Anti-Counterfeit Authority (ACA)

• Primary agency for investigating trademark counterfeiting.
• Conducts raids, seizures, and prosecutions.
• Maintains the IP Recordation System for imported goods.

3.2 Kenya Revenue Authority (KRA) / Customs

• Seizes infringing goods at ports and border points.
• Works through the EACCMA framework and ACA recordation.

3.3 Kenya Bureau of Standards (KEBS)

• Can detain substandard or falsely marked goods.

3.4 National Police Service

• Supports investigations and enforcement raids.

3.5 The Judiciary

• Handles criminal prosecutions initiated by ACA or the Office of the Director of Public Prosecutions (ODPP).
• Civil courts hear infringement and passing-off suits.

3.6 The Registrar of Trade Marks

• Maintains the register of trademarks and handles administrative disputes.
• Coordinates with enforcement agencies where required.

4. Penalties for Trademark Offences

Penalties vary depending on the statute invoked:

Trade Marks Act (Cap. 506):

• Fines for unauthorised use or falsification
• Imprisonment for serious offences
• Confiscation of infringing goods

Anti-Counterfeit Act:

• Up to KES 1,000,000 fine
• Up to 5 years imprisonment
• Destruction of counterfeit goods
• Compensation orders for rights holders

Penal Code:

• Fines and imprisonment for false trade descriptions and fraudulent misrepresentation

Civil remedies such as damages, injunctions, delivery-up, and account of profits remain available concurrently.

5. Practical Considerations for Trademark Owners

Effective trademark enforcement in Kenya requires an integrated strategy combining both preventive and reactive approaches.

• Registering the Trademark: Only registered trademarks enjoy protection under the criminal provisions of the Trade Marks Act. Rights holders must ensure registrations are current and reflective of all key marks, sub-brands, and logos.
• Border Recordation with ACA: Recordation assists customs officials in identifying counterfeit imports and facilitates proactive seizures.
• Market Surveillance: Routine monitoring of physical and online markets enables early detection of counterfeits.
• Strategic Engagement with Enforcement Agencies: Working with ACA, KEBS, KRA, and police improves enforcement efficiency and reduces evidentiary challenges.
• Consumer Awareness Campaigns: Public education about authentic products strengthens deterrence and enhances brand reputation.

6. Conclusion

Trademark offences in Kenya present a significant threat to legitimate trade, consumer safety, and brand value. Kenya’s legislative framework provides strong criminal sanctions to deter counterfeiting, forgery, and deceptive practices. However, enforcement success depends on proactive brand management, strategic monitoring, and collaboration with regulatory agencies. Businesses that invest in robust IP protection frameworks are better positioned to safeguard their market share, reputation, and long-term competitiveness.