Intellectual Property

Our world-class IP team of lawyers is currently the largest Madrid filing practice in Kenya, having filed most Madrid applications originating from Kenya. We are also one of the largest trademark and patent filing practices in the East African Community region.

  • Overview

Overview

In a world increasingly dominated by brands, the ability to register and protect the rights that clients obtain in their products, services and brands is an essential component in modern business.

We advise on all aspects of intellectual property (IP) including:

  • providing advisory services
  • undertaking due diligence investigations
  • acting for clients
  • addressing contentious matters in all legal forums

We act for clients both locally and internationally under the Madrid and ARIPO systems of registration, and help them with national protection in other countries worldwide through a network of associate agent law firms.

We operate across East Africa and are one of the largest trademark and patent filing practices in the East African Community region. Our world-class IP team of lawyers are currently the largest Madrid filing practice in Kenya, having filed most Madrid applications originating from Kenya.

We are notably very strong in IP disputes and are regularly instructed on complicated matters across East Africa, covering  trade dress litigation, passing off, design and patent infringement and trademark infringement. We have dealt with major matter disputes before the High Court and Court of Appeal. Our lawyers are well versed in IP litigation, oppositions and counterfeit raids practice.

Our commercial IP experience has extended to large filing and renewal projects across Sub-Saharan Africa for clients across the globe. We have provided regulatory and compliance advice to international giants.

We were ranked in the Gold category of the 2016 edition of World Trademark Review 1000 (WTR). According to WTR, our “dizzying rise to the apex of the East African trademark and IP scene has been nothing short of phenomenal, and developments in the past 12 months have only pushed it on even further”. We also won the Intellectual Property Team of the Year Award for 2015 at the African Legal Awards hosted by Legal Week and the Corporate Lawyers Association.

Our clients include leading multinationals from around the world within the financial services, manufacturing, pharmaceutical & healthcare, and technology, media & telecommunications sectors. 

Our specialist services include:

  • High Court litigation and dispute resolution – trademark infringement, passing off, patent infringement, design infringement, copyright infringement across East Africa
  • Counterfeit search and seizure actions – Anti Counterfeit Agency
  • Domain name dispute resolution – KENIC (co.ke) and WIPO (.com)
  • Advertising complaints based on misleading advertising – Advertising Standards Committee established under the Advertising Standards Code, Kenya
  • Legal opinions – protection and enforcement of IP in East Africa
  • Trademark opposition and cancellation actions before the Registrar of Trademarks
  • Design opposition and revocation actions
  • Strategic counselling on IP strategy for companies operating within East Africa
  • Trademarks, patent, utility model design and domain name registration across Africa
  • Patent and utility model drafting and filing – Kenya, ARIPO and PCT
  • Trademark registration using Madrid, OAPI, ARIPO
  • Promotions
  • General regulatory and compliance work including liaising with/ lobbying regulators on compliance issues
  • Regulatory aspects of standards related to import and sale of products in Kenya  – Kenya Bureau of Standards
  • Acquisition of software agreements – vendor or purchaser side
  • Negotiation of and drafting of IT agreements
  • Privacy
  • E-commerce (remove additional space)
  • Fintech