ADVISORY OPINION ON PROTECTION OF UNIQUE FURNITURE DESIGNS UNDER

INTELLECTUAL PROPERTY LAWS IN KENYA

To: TBA
Our Ref: TBA
Date: 30TH October, 2017
Re: Legal opinion on how to protect furniture designs under intellectual property
laws in Kenya
_____________________________________________________________________________________

Background

This legal opinion aims to determine the category of Intellectual Property Law in Kenya that
would be most suitable for the protection of a craftsman’s unique furniture designs.

Approach

In rendering the legal opinion herein, careful consideration has been given to Intellectual
Property Laws in Kenya in order to determine the best possible legislation under which to
achieve Intellectual Property rights protection.
The following are the laws enacted to protect against Intellectual Property rights infringement
in Kenya:-
 Constitution of Kenya Article 40 (5)
 Industrial Property Act 2001
 Trademarks Act Cap 506
 Copyright Act 2001

What is Intellectual Property?

Intellectual Property is a property that basically arises from the human intellect. It is a product
of the human intellectual process and is therefore the product of the human intellect or mind.

Basically, Intellectual Property Law protects applications of ideas and information that are of
commercial value. They are rights to stop others from doing certain things such as piracy,
counterfeiting, imitations, etc.

The rationale for protection of intellectual property is to stimulate and promote further
creativity.

Intellectual Property Law comprises the following types of protection:

1. Industrial Property Rights (i.e. Patents, Trademarks, Industrial designs, Utility Models)
2. Copyright (Literary and artistic works)

We shall for purposes of this legal opinion concern ourselves with two limbs of Intellectual
Property Law (i.e. Industrial designs and Copyright) that are concerned with protection of
aesthetics (eye appeal) of articles as defined by their shape, configuration, pattern or ornament.
WHAT IS AN INDUSTRIAL DESIGN?

According to industrial property Act 2001, an industrial design is defined as "any composition
of lines or colours or any three dimensional form whether or not associated with lines or
colours, provided that such composition or form gives a special appearance to a product of
industry or handicraft and can serve as pattern for a product of industry or handicraft.”

In other words an industrial design is concerned only with the outward appearance (eye
appeal) of articles as defined by their shape, configuration, pattern or ornament. It must be
understood that an industrial design DOES NOT protect the method of construction or the
function of the article.

Visual appeal is one of the considerations that influence the decision of consumers to prefer one
product over another, particularly in areas where a range of products performing the same
function is available in the market. If the technical performance of the various products offered
by different manufacturers is relatively equal, aesthetic appeal, along with cost, will determine
the consumer's choice.

The legal protection of industrial designs, thus, serves the important function of protecting one
of the distinctive elements by which manufacturers achieve market success. By rewarding the
creator for the effort, which has produced the industrial design, the legal protection accorded
thus serves as an incentive to the investment of resources in fostering the design element of
production.

Conditions for Registration of an Industrial Design

An industrial design is registrable if it is new. An industrial design is deemed to be new if it has

not been disclosed to the public, anywhere in the world, by publication in tangible form or, in
Kenya by use or in any other way, prior to the filing date or, where applicable, the priority date
of the application for registration. However a disclosure of the industrial design is not taken
into consideration if it occurred not earlier than twelve months before the filing date or, where
applicable, the priority date of the application and if it was by reason or in consequence of:

1. acts committed by the applicant or his predecessor in title; or

2. an evident abuse committed by a third party in relation to the applicant or his
predecessor in title.

Industrial designs that are contrary to public order or morality are not registrable.

Requirements for Registration of an Industrial Design

An application for registration of an industrial design should contain;-

1. A completed application form (form IP 27);

2. Two identical specimens of the design;
3. drawings, photographs or other graphic representations of the article embodying the
industrial design and an indication of the kind of products for which the industrial
design is to be used;
4. The prescribed application fee;
 5. Where the applicant is not the creator, the request must be accompanied by a statement
justifying the applicant's right to the registration of the industrial design; and
6. A power of attorney, where the applicant is represented by an agent;

The purpose of the representations is to present an accurate and complete picture of the design
to be registered and to identify those features of the design which are novel and for which
protection is sought. The representations, therefore, comprise two elements;
 A series of views of the article; and
 A statement of novelty.

The Views of the Article

The representations should consist of a sufficient number of different views of the article so as
to leave no doubt about the precise features of shape, configuration, pattern and/or ornament
for which protection is sought. To register a set of articles there must be views of all the
different articles in the set. In most cases the most significant views are often those that show
the article in perspective.

Size and presentation of representations

The representations, which may consist of drawings or photographs, should be presented on

strong paper (but not cardboard) and on one side only of A4 size (297 mm x 210 m or 330 mm x
200 mm) with a left-hand margin of approximately 50 mm.
Only one side of the paper should be used and views should be grouped together on the page
so that each set of representations may be made up of as few sheets as possible. The views
should be drawn or mounted in an upright position. Each sheet should bear the name of the
applicant(s) in the top left-hand corner excluding the margin and, in the top right-hand corner
the sheet number and total number of sheets in the set should be given (e.g. "Sheet 1 of 3",
"Sheet 2 of 3", etc as appropriate).

Designations of the Views

All the different views which make up a set of representations should be designated either as
"perspective view”, "Front View", “side view”, "View of One Side", “View from Front” etc as the
case may be.
No descriptive matter, apart from the designations, should be included and no indication of the
size of the article should be shown.

Words, Letters and Numerals

Where words, letters and/or numerals appear in the design, the representations should carry a
disclaimer of any right to their exclusive use. An example is as follows:-

"No claim is made to any right to the exclusive use of the words, letters or numerals appearing
in the design".
Repeated Surface Patterns

Representations and specimens of a design which consists of a repeating surface pattern must
show the complete pattern or a sufficient portion of the repeat whose length and width must
not be smaller than 180 mm x 130 mm

Photograph Views

These should show the article pictured in front of a plain and contrasting background.
Confusing highlights, reflections and heavy shadows should be avoided by dulling any
polished surfaces and by careful arrangement of lighting. Care should also be taken to prevent
undue and misleading distortion.
Particular attention should be paid, in gluing photographs onto suitable paper, to ensure that
each picture is gummed right up to its edges and so makes a permanent bond with its backing
sheet. Sticky tape and staples should not be used.

Statement of novelty

Each set of representations must include, on the front of the first sheet, a statement which
clearly identifies the novel features of the design in terms of; "Shape”, “configuration", pattern"
and/or "ornament". This should be phrased along the lines of the following example:
"The features of the design for which novelty is claimed are the shape and configuration* of the
article as shown in the representations".
(*and/or "Pattern and ornament" as appropriate).

"Shape", "configuration", "pattern" and/or "ornament" are the only features that can be
protected by design registration and the Statement of Novelty must not include any description
of the use of the article or its features, or of its advantages or method of construction.

Applications to register the pattern or ornaments of a design to be applied to textile articles,

wallpaper or lace should be filed without a Statement of Novelty as such articles are entitled to
the protection of their features of pattern and ornament only.

Designs excluded from registration

Designs to be applied to any of the following articles are excluded from registration in Kenya;-

 Works of sculpture, architecture, painting, engraving, enameling, embroidery,

photography and any other design of purely artistic nature.
 Designs which consist of solely in a change in the colour of designs already known.
 Designs whose features correspond to or are determined by functions to be performed
by the products
What happens to an application after it has been filed?

First the application is assigned a filing date and an application number. This date is important
especially in establishing the priority of the design.

So as to ensure that all the documents have been prepared and filed correctly, a search is done
among the existing designs in order to establish that the design is new. The search cannot be
exhaustive and the fact that a design is accepted for registration cannot be a guarantee that
other interested parties might not challenge the registration.

If, as a result of the search, the design is considered not to be new then the applicant will be
notified of the objection. The applicant is given two months within which he can apply for a
hearing or make observations in writing on the objections of the Institute.

Upon examination the application is published in the Kenya Gazette or in the Industrial
Property Journal.

Within 60 days after the notice of the application is published a person may oppose the
application by giving a notice of opposition in Form IP 23 in duplicate to the Managing
Director.

The notice of opposition must set out the grounds for opposing the application. A certificate of
registration is issued to the applicant after the expiration of the opposition period.

Rights conferred by a registered industrial design

Registration of an industrial design confers upon its registered owner the right to preclude third
parties from the following acts:

 Reproducing the industrial design in the manufacture of a product.

 Importing, offering for sale and selling a product reproducing the protected industrial
design
 Stocking of such a product for the purposes of offering for sale or selling it.

A registered design is a property, which like any other business commodity, may be bought,
sold, hired or licensed.

Duration of Certificate of Registration of an Industrial Design

The duration of protection conferred by a certificate of registration for an industrial design is 5

years from the date of filing of the application for registration. However the registration may be
renewed for two further consecutive periods of five years upon payment of a renewal fee. The
fees for the renewal of registration of an industrial design must be paid within twelve months
preceding expiration of the period of registration but a grace period of six months is allowed for
the late payment of the renewal fees on payment of the surcharge.
COPYRIGHT

Copyright protection is the branch of intellectual property law that provides the legal
safeguards necessary for creativity to thrive. Copyright therefore, protects the original
expression of ideas and not the ideas themselves. It safeguards one’s original works of art,
literature, music, films, sound recording, broadcasts and computer programs from copying and
certain other illegal uses.

Applicable Law

 Copyright Act no 12 of 2001

 Copyright Regulations, 2004
 Copyright (Amendment) Regulations, 2011

Subject matter eligible for protection under Copyright Act

The Act provides for the following works to be eligible for copyright protection:
 Literary works
 Musical works
 Artistic works
 Audiovisual works
 Sound recordings
 Broadcasts

Literary works are further defined to include:

 novels, stories, poetic works, letters, reports, memoranda
 plays, stage directions, film scenarios, broadcasting scripts
 textbooks, treatises, essays, articles, encyclopaedias, dictionaries
 lectures, addresses and sermons
 charts, tables and compilations of data
 Computer programs.
 Artistic works are further defined to include:
 paintings, drawings, etchings, lithographs, woodcuts, engravings, prints
 maps, plans, diagrams
 works of sculpture, works of architecture
 Photographs, works of artistic craftsmanship.

Requirements for subsistence of copyright

No requirement for registration. For a work to qualify for protection, the author must be a
citizen of Kenya, or domiciled or ordinarily resident in Kenya. Alternatively, the work must
have been made or first published in Kenya.

Copyright protection is also extended to persons who are citizens of, or domiciled or resident
in, a country which is a party of a treaty of which Kenya is also a party, and which provides for
copyright protection.
Authorship and ownership of Copyright

The ownership of copyright in a work initially vests in the author, unless the work was done in
terms of a commission or in the course of the author’s employment, in which case it vests in the
person who commissioned the work or in the employer.

The ownership in this context refers to the economic rights inherent in copyright. The economic
rights may be transferred or licensed.

The author also enjoys the moral rights pertaining to the work; these include the right to claim
authorship, and the right to object to distortion or mutilation of the work, or any derogatory
action, which would be prejudicial to his honour or reputation. The moral rights may not be
transferred during the life of the author.

Duration of copyright
In the case of literary, musical and artistic works (except photographs) the copyright endures
for the lifetime of the author plus 50 years.

In the case of all other works, the duration is 50 years from the date on which the work was
made or was made available to the public.

Protection afforded by copyright

Copyright confers on the owner the exclusive right to control the doing in Kenya of any of the
following acts:
 The reproduction of the work in any material form, including the translation or
adaptation thereof
 The distribution to the public of the work, by way of sale, rental, lease, hire or loan
 Communication to the public with regards to the work.

Exceptions to copyright protection

The following acts are amongst a long list of acts excluded from the rights of the owner:
 The doing of any of the listed acts by way of fair dealing for purposes of scientific
research, private use, criticism and review
 The reproduction and distribution of copies of an artistic work situated in a public place
 Certain usages for teaching in schools or universities

Conclusion
In conclusion, it would seem that a furniture design would be capable of being protected under
the two limbs of intellectual property law of Industrial Design and Copyright.