- Publications & Insights
John Syekei is a partner in our Nairobi office and heads the Intellectual Property and Technology practice group in East Africa. John is a member of the Firm’s Management Board.
His practice areas and experience cover commercial intellectual property advice, Technology law, E-Commerce, Payments, Fintech, advertising law and litigation, data privacy, advice on drafting and/or negotiation of information technology agreements, and advice on the protection and enforcement of trade mark, patent, copyright and industrial designs. He also regularly advises on IP Litigation and dispute resolution covering trademarks, patents ,designs , breach of IT contracts, anti-counterfeiting raids, IP due diligence, licensing , franchise agreements and domain name dispute resolutions.
John is regionally and globally renowned for his excellence in the IP space, and has received several top citations and recognitions from international directories such as Chambers Global, World Trademark Reviews, IP Stars and WIPR Leaders. Most recently he was ranked as a WTR Global Leader by the World Trademark Review.
On the IT/TMT side, John advises a number of leading technology companies in the world including Uber, Google, Microsoft, Facebook and IBM. He also acts as the Kenyan counsel on regulation, compliance and corporate matters for Philip Morris International, Proctor & Gamble, IBM and Uber.
Over the years, John has established a formidable reputation within the E-Commerce and FinTech space. He regularly advises FinTech clients on matters relating to Corporate Governance; Information Technology; Financial Services Regulation; Mobile Money and Payments Law. He has written extensively on topical issues around this area, and a number of his articles have been published on international platforms such as Lexology. John is also well known for its ‘outstanding’ capabilities in Data Protection and Cyber Security.
John is a member of the advisory council of Innovation Law Club Africa (ILCA), an international forum for capacity building, knowledge exchange, and professional collaboration among technology law specialists. He is also a member of International Trademark Association East Africa (INTA), International Federation of Intellectual Property Attorneys (FICPI), International Bar Association (IBA), International Trade Mark Association (TOPC committee member), World Trademark Review (WTR), American Chambers of Commerce (AMCHAM).
In May 2021, John successfully completed the Leadership Training Programme organised by the International Bar Association.
He is an Advocate of the High Court of Kenya as well as a Patent Agent, Commissioner of Oaths and a Notary Public. He holds a LLB from Moi University.
Recent Anti-counterfeit transactions
- Skechers USA Inc. II through Adams & Adams in relation to the sale and advertising of counterfeit goods bearing SKECHERS trademarks.
- Canon Kabushiki Kaisha on online enforcement and related anti-counterfeiting enforcement actions in relation to the CANON trademark.
- Chanel Limited through Adams & Adams on anti-counterfeiting enforcement actions in relation to the CHANEL trademarks.
- Advised ADIDAS GmbH in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency resulting in the successful raid, seizure and destruction of a consignment of counterfeit products at the Port of Mombasa that were infringing on the protected trademark rights of ADIDAS.
- Advised Glaxo SmithKline in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency and the Commissioner for Customs resulting in the successful raid, seizure and destruction of a consignment of counterfeit products infringing on the protected trademark rights of GSK.
- Advising Microsoft Corporation on legal compliance issues in software counterfeits.
- Advising Oracle Corporation on legal compliance issues in software counterfeits.
- Advised Reed Elsevier (UK) Limited, trading as Lexis Nexis, on filing a counterfeit action before the Kenya Anti- Counterfeit Agency which resulted in a successful raid and seizure of counterfeit book sets infringing on the Lexis Nexis copyright.
- Advising Syngenta on anti-counterfeit issues in Kenya
- Advising BASF Chemicals on anti-counterfeit issues in Kenya
- Advising 3M Corporation on anti-counterfeit issues in Kenya
- Advising Blount Inc, an Oregon based global agro- tools manufacturer, in several anti-counterfeit mandates over the past 3 years across the country.
- Advising Diageo on an anti-counterfeit matter in Rwanda in relation to its JOHNNY WALKER whisky brand that originated in Dubai.
- Alliance for a Green Revolution in Africa (AGRA) the trade mark registration strategy and assisted in trade mark registration in a number of countries in in Eastern, Southern, Western and Northern Africa.
- Acting for Mjengo limited, a leading Kenyan company in the FMCG sector in trade mark registration strategy and assisted in trade mark registration in different countries in Eastern, Southern, Western and Northern Africa, the United Kingdom, Saudi Arabia, Yemen, the UAE, Singapore, Hong Kong and Vietnam, among other jurisdictions.
- Advising and acting for Four Seasons Hotels Limited through Fross Zelnick Lehrman & Zissu in the protection of trade marks in Kenya, Tanzania and Zanzibar.
- Equity Group Holdings Plc in trade mark registration strategy and assisting in trade mark registration in a number of countries and territories including Kenya, Uganda, Tanzania, Zanzibar, Rwanda, Ethiopia and the Democratic Republic of Congo, among others.
- Diageo Group of Companies in trade mark clearance searches and registration in Kenya, Tanzania and Zanzibar and in managing client’s portfolio of trade marks in those jurisdictions.
- Advising and acting for Standard Chartered Plc through Adams & Adams in a trade mark search and registration in Kenya.
- ABSA in trade mark searches and registration in Kenya.
- Advising and acting for Kenya Airways in trade mark protection in Kenya.
- Advised and acted for Shell Brands International AG through Adams & Adams in connection with the Infringement of various Kenya trade mark registrations in the name of Shell brands International AG and passing-off by Malindi Service Station.
- Advising and acting for Diageo in this ongoing matter pending before the High Court of Kenya. The disputes relates to the infringement of the CAPTAIN MORGAN trade marks. There is a pending opposition before the Registrar of Trade Marks related to the dispute before the High Court of Kenya.
- Advising Cipla Limited in relation to a dispute with Cipla’s former distributor, Lords Healthcare Ltd, who is claiming ownership of Cipla’s global trade marks, including its corporate name Cipla. The distributor is also claiming ownership of certain drug registrations, as a result of having applied for registration of those drugs.
- Capwell Industries Limited in a suit filed by Unga Limited (the “Plaintiff”) in the High Court, Commercial and Tax Division. The Plaintiff filed the suit alleging that it is the owner of Copyright and trade mark rights in the slogan DO AMAIZEING WITH HOSTESS. It claims that Capwell’s use of the brand AMAIZE in the sale and advertising of its maize meal product is liable for copyright infringement, trade mark infringement and passing off of its DO AMAIZEING WITH HOSTESS brand. The Plaintiff has filed an application seeking an interlocutory injunction restraining Capwell from selling it’s AMAIZE branded maize meal pending hearing of the suit.
- Bata Brands SA and Bata Shoe Company (Kenya) Limited in relation to appealing a High Court decision concerning enforcement of an (unregistered) industrial design.
- Successfully acted for Nairobi Java House Limited in a High Court Civil Appeal in Kampala, Uganda in an appeal against the decision of the Registrar following trademark opposition proceedings.
- Acted Eaton Towers in appeal in the High Court Civil Appeal Court in Kenya against ruling of the Assistant Registrar of Trademarks allowing opposition against registration of the “EATON TOWERS” mark.
- Acting for Diageo Brands B.V in opposition of the registration of the BLUE LABEL.
- Acted Google Inc in opposition proceedings relating to its “BEBAPAY” trade mark.
- We acted for Sony Corporation in appealing in the High Court Civil Appeal against a ruling of the Assistant Registrar that allowed the Applicant’s mark to proceed for registration.
- We acted for Diageo Brands B.V in a suit in the High Court of Kenya against Platinum Distillers.
- Instructed by Kenya Airways to instigate arbitration proceedings in order to obtain ownership of the domain name www.kq.com. The arbitration was conducted within the auspices of the WIPO domain name dispute resolution centre.
- Acting for Diageo Brands B.V and EABL International Limited, in close coordination with the Trust Law Chamber in Rwanda to assist the initiation of prosecution against suspects in counterfeit goods.
- Acted for Bharti Airtel Limited, Airtel Networks Kenya Limited in a domain name disputes
- Acted for Procter and Gamble in advertising and competition law litigation by defending a suit filed by Unilever relating to the OMO and Ariel brands.
- Acted for Bidco Oil Refineries Limited in a litigation matter with Mt. Meru Limited in Zambia.
- We advised Starbucks and defended it in respect of demands made by 3 individuals depicted in a mural in various Starbucks stores.
Technology, Media and Telecommunications
- John has led a team of lawyers in Bowmans across all our offices and a network of Firms in Africa that have a privacy, technology and telecoms focus in advising Google on 86 projects in 32 countries in Africa since 2018 under the Google Hub covering: fintech, privacy, technology, telecoms infrastructure, e-commerce , regulatory and compliance projects.
- Jack Ma Foundation on the roll out of its African Netpreneur Prize Initiative throughout the continent.
- A refugee protection organisation in connection with the proposed roll out of a mental health app designed to support young refugee mothers in Kenya.
- Advised Microsoft EA Limited on the setting up of an ‘IP Hub’ which is a technology ‘space’ or forum to assist young software developers to understand intellectual property and be aware of the means available in law to protect the IP in their software so as to ultimately enable them to commercialise their IP from a point of knowledge in terms of value of their IP.
- Advised Kopo Kopo Inc, an American entity from the Bay Area of San Francisco (Silicon Valley) as a merchant aggregator for MPESA’s buy goods functionality on the regulatory landscape relating to mobile money, and negotiated contracts with Safaricom in relation to its MPESA platform and the establishment of a mobile phone point of sale.
- Advised on the drafting and negotiating of a co-operation agreement between Safaricom Limited and Seven Seas Technologies Limited for collaboration in the research and development of innovative technology products, including the use of cloud computing.
- Advised Centum Investments and Etranzact, a Nigerian mobile solutions and e-commerce provider, in the establishment of a local entity under a joint venture seeking to develop electronic payment solutions for East Africa.
- Facebook on their data privacy matters in Kenya
- Google on data privacy in Kenya and 30 other countries in Africa
- Microsoft on their data privacy matters in Kenya
- IBM on their data privacy matters in Kenya
- UAP Old Mutual on data privacy matters
- Proctor & Gamble on data privacy matters
- BASF on data privacy matters
- Advised several clients of White & Case on data privacy matters
- Advised several clients of Baker & McKenzie on data privacy matters
- KPMG, working with Freshfields on certain aspects of privacy in relation to a Kenyan project
- Advised several global clients on data privacy matters in Kenya working with international law firms in London, Washington DC, New York and Los Angeles
- Advising and acting for Blue Host Inc through Cowan, Liebowitz & Latman, P.C in BLUEHOST.CO.KE domain name proceedings. The matter proceeded to arbitration and was concluded successfully in favour of Blue Host Inc.
- Chambers and Partners consistently ranked John in Band 1 for Corporate/Commercial: Intellectual Property for the past five consecutive years (2017 to 2021) as well as in Band 3 for FinTech Legal in 2021.
- Recognised as WTR Global Leader by World Trademark Review, 2021
- Recognised as a WIPR Leader for the 2020 edition
- Recognised by WIPR Leaders as among best and the brightest in IP private practice, 2018 edition
- John is ranked in the Gold Band by WTR 1000 since 2013 up to 2020
- Managing IP ranked him as an IP star in 2014 and 2015, a very highly regarded recognition within the IP world.
- Under John’s supervision, Coulson Harney won IP Team of the Year at the prestigious African Legal Awards in 2015.
- Legal 500 EMEA 2015 listed John as recommended lawyer.
- Who’s Who Legal: Patents
Publications & Insights
- Kenya: IP & Tech Bimonthly Digest: CAK is looking into regulating over-the-top services (OTTs)
- East Africa: IP East Africa Quarterly Newsletter – Q3 2022
- Kenya: IP and Tech Digest: The Registration of data controllers and data processors commences
- Kenya: Data Protection Act – Ready for 14 July 2022? Registration as an ongoing process not an event
- Kenya: TMT Tidbits: Delving into Telecommunications – The Telecommunications sector from an expert’s perspective
- Kenya: IP and Tech Digest: Communications Tribunal Expected to Rule on Mobile Tariffs Cut on 5 August 2022
- Kenya: Delving into Telecommunications – Dealing With Clients in The Telecommunications Sector
- Kenya: Delving into Telecommunications – Challenges faced by service providers in Kenya
- Kenya: IP and Tech Digest: UK Fines Clearview AI £7.5M for Scraping Citizens’ Data
- Kenya: Delving into Telecommunications – Compliance with licence obligations
- Kenya: Extension of Deadline for the Recording of Intellectual Property Rights with the Kenyan Anti-Counterfeit Authority to 1 January 2023
- IP East Africa Quarterly Newsletter – Q2 2022
- Chambers and Partners: Fintech 2022 Guide: Kenyan Chapter
- Kenya: Google and Microsoft Set up Tech Development Hubs in Kenya
- Kenya: TMT Tidbits: Delving into Telecommunications – Understanding the Regulatory Environment
- Kenya: Towards Protection of Children’s Rights in the Digital Space
- Kenya: World Intellectual Property Day
- Kenya: TMT Tidbits: Delving into Telecommunications
- Kenya: IP & Technology Digest: A Cross-border Increase in our Fintech and Payments Transactions
- Kenya: The Anti-Counterfeit Authority’s Compliance Requirements for Intellectual Property Rights Owners
- Kenya: Intellectual Property & Technology Digest February 2022
- Kenya: Snapshot: Analysis of the Data Protection Regulations – the next stage in data protection compliance in Kenya
- Kenya: IP & Technology Digest January 2022
- Kenya: Publication of the Data Protection Regulations, 2021
- Kenya: Review of the Copyright Amendment Bill, 2021
- Kenya: Update from ARIPO: Overview of Changes to the Harare and Banjul Protocols
- Kenya: IP & Technology Digest November 2021
- IP and Technology East African Quarterly November 2021 Newsletter
- Kenya: IP Tech Digest
- Kenya: IP Tech Digest
- Kenya: IP Tech Digest
- Lexology: Getting the deal through – Fintech 2022: Kenyan Chapter
- Legislation Progress on the Anti-Counterfeit Act Regulations
- Kenya: East Africa data infrastructure ripe and ready to move to the next level
- Kenya: National rights registry updates: Data re-entry on the KECOBO digital platform
- Kenya: Publication of the Licensing and Shared Spectrum Framework for Community Networks
- East Africa Quarterly and Monthly Newsletter
- Kenya: Clarity on local equity participation requirements in the ICT sector
- Kenya: Public Participation on the draft Data Protection Regulations
- Kenya: Overview of Data Infrastructure in East Africa
- Kenya: Termination of franchise agreements for failure to uphold operational standards permitted
- Chambers ‘Fintech 2021’ Global Practice Guide
- Kenya: Intellectual Property and Technology Digest
- Foreign Electronic Certification Service Providers Now Recognised By The CA
- Publication of the National information Communication and Technology Policy Guidelines, 2020
- Compulsory Licensing in the Age a Pandemic
- Developments on the Appointment of the Data Commissioner
- The Central Bank of Kenya (Amendment) Bill, 2020
- Privacy Law; A Global Legal Perspective on Data Protection Relating to Advertising and Marketing
- Kenya’s journey towards a harmonized IP legal regime
- Can another company own unassigned IP assets held by a dissolved company? The legal position in Kenya
- E-Signature Essentials
- COVID-19: Suspension of IP services and functions
- The Computer Misuse and Cybercrimes Act
- What new digital taxes contemplated in the Finance Act mean for Digital Trade and Services in Kenya
- CA sets the stage for efficient spectrum usage in Kenya
- Dissolution of a company as a remedy for Trade Mark Infringement
- Adherence to Copyright Obligations by Licensed Service Providers
- Data Protection Act: Let’s talk about Consent
- Amendments to the Anti-Counterfeit Act come into force
- New payment system introduced for spectrum licence fees
- Malawi becomes the 118th member of the Madrid System
- Fintech innovations are difficult but not impossible to patent
- How to strengthen protection and enforcement of trade secrets in East Africa
- Healthy respect for advertising guidelines is critical in Kenyan pharmaceutical sector
- Striking out of offensive company names
- Kenyan regulatory net widens to include FinTech lenders
- Confusing similarity and a tale of two drugs
- Does mere use confer protection? High Court provides answer
- Lexology: A structured guide to Fintech in Kenya
- No place in Kenyan healthtech for wild west approach to data
- Company names versus Trademarks
- Intellectual Property comes to the fore in East Africa
- Movable Property Security Rights Bill – towards IP financing
- East African IP landscape has shifted fundamentally, says Bowmans regional IP head
- Global IP award for Bowmans in Kenya