INTELLECTUAL PROPERTY
Our specialist intellectual property and technology lawyers work closely with clients to develop, protect, promote and enforce their intellectual property rights. We advise on all aspects of the exploitation and use of intellectual property rights and the acquisition and use of information technology products and services. We work for companies in a variety of industries and our specialist intellectual property expertise ensures that we are able to provide cost effective advice that is commercially sound and practical. Our lawyers are also experienced in both contentious and non-contentious enforcement of intellectual property rights relating to expungement, infringement and opposition proceedings in respect of patents, plant breeders rights, unregistered and registered designs, copyright and database rights, image rights, domain names, trade marks and the law of passing off. We handle and advise on registration of various IP rights through local, regional and international registries. We also advise on legal issues arising from parallel importation of goods.
We offer particular expertise in relation to acquisition of rights, transactions involving licensing and the transfer of technology, technology joint ventures, research and development and franchising agreements.
Our practice and expertise also extends to advising on intellectual property questions arising in connection with mergers and acquisitions and establishment of new businesses. We also advise on regulatory and liability questions on and arising from the introduction and use of transgenic materials in the local market.
Kaplan & Stratton operates the oldest and one of the largest trade mark practices in Kenya.
RECENT TRANSACTIONS
- We were the local counsel to Toyota Tsusho Corporation (TTC) in connection with the Euro 2.3 billion global acquisition of the CFAO group of companies from Pinault Printemps Redoute Group (2012). We are currently engaged in the local anti-trust filings.
- Instructed by Delta Airlines Incorporated to file an application for injunction against Delta Connection Limited to restrain infringement of its “DELTA” trademark.
- Act for Safepak Limited in several industrial design infringement claims.
Instructed by British American Tobacco in a passing off and trademark infringement claim – Opposition by Benson & Hedges (overseas) Limited against trade mark “Tradition”. - Advised Syngenta International AG on Product liability specific to GMO. The matter involved numerous complex GMO liability issues (i.e. trait performance, trans-border flow of GM seed etc) and required an analysis of multiple Kenyan statutory laws, the English common law and specific international treaties and their applicability on various GMO liability issues raised.
- Successfully applied for the expungement of a trademark registered in the name of Sonal Holding (K) Limited on behalf of our client The Procter & Gamble Company. The Assistant Registrar ruled in our favour and ordered that the mark be struck off the register.
- Successfully represented Hewlett –Packard Development Company L.P., in a petition filed by Kenya Toner and Suppliers Limited in which it was seeking the release of counterfeit goods alleged to have been seized in violation of its constitutional rights to privacy and property. The Petition was dismissed paving the way for the prosecution of the counterfeiters.
- Instructed by Amref to defend it in a copyright infringement suit filed by a music composer against Amref.
- Instructed by Pfizer Incorporated in two patent infringement cases in Kenya.
We act for several large multinationals with respect to protection of trade mark rights in Kenya. These include Unilever, Sara Lee, General Motors, Sony Corporation, Honda and so on.
