Legal challenges facing franchising in Kenya 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

Innovation process IP database INNOVATION 30/11/2018 Anthony Okulo PROTECTION (REGISTRATION) IP database COMMERCIALISATION PROTECTION AGAINST INFRINGEMENT TRANSFER / LICENSING 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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http://www.biashara.biz/pd_tusker.cfm# 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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 Article 27 : ‘ everyone has the right to protection of the moral and material interests resulting from scientific, literary or artistic production of which he is the author TK: unauthorised reproduction [ ownership??] 30/11/2018 Anthony Okulo

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 –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 is a proprietary right. 30/11/2018 Anthony Okulo

Remedies or Relief Damages Injunctions Accounts Delivery Destruction Royalties Inquiry 30/11/2018 Anthony Okulo

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 30/11/2018 Anthony Okulo

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..’ 30/11/2018 Anthony Okulo