Treat an infringement report as an incident, not a conclusion

An urgent message saying that a competitor has “stolen the brand” is a starting signal, not a legal diagnosis. The first task is to freeze the facts: what was seen, when, by whom, on which product or screen, and whether the suspected activity is still continuing. Record the exact seller, account, premises, payment recipient and date. Preserve the original file or item before anyone edits a screenshot, sends an angry warning or posts an accusation online.

Open a dated incident file and appoint one person to control evidence and communications. Ask staff to retain emails, design files, invoices, platform messages, access logs and product samples. Suspend routine deletion only for the relevant custodians and date range. A broad, unmanaged collection creates noise; a narrow preservation instruction protects the material that may prove ownership, copying, knowledge and loss.

The objective in the first 24 hours is not to choose the most aggressive remedy. It is to prevent avoidable evidence loss while the legal and commercial position is tested. A supplier dispute, licence overrun, genuine parallel import, independent creation or employee access issue can look like infringement at first sight. The response should remain reversible until the rights and actors are confirmed.

Build a rights map before choosing an enforcement route

List every potentially relevant asset separately. The same conduct may involve a registered trade mark on packaging, copyright in photographs or software, a registered industrial design, a patent claim, confidential manufacturing information and contractual restrictions. For each asset, record the owner, Kenyan status, registration or creation details, renewal position, territory, licence terms and the act complained of. Do not assume that one certificate covers a related sign, product feature or service.

For a registered mark, sections 7 and 8 of the Trade Marks Act connect the exclusive right and infringement analysis to the registered mark and the goods or services for which it is protected, subject to the Act’s limitations. Section 5 preserves a passing-off route even though no infringement action lies for an unregistered mark. The evidence for passing off is not simply a logo comparison; reputation, misrepresentation and resulting damage must be addressed.

For inventions and registered designs, sections 105 and 106 of the Industrial Property Act define infringement by reference to protected acts and the scope of a valid grant, and provide the statutory relief framework. A product should therefore be mapped claim by claim or feature by feature. The patent and industrial-design guide explains why a registration number alone does not replace that comparison.

Separate copying, confusion, leakage and counterfeiting

Classify the alleged wrong before sending a demand. A confusing trading name raises different proof from copied website text. A former employee using a customer list calls for access history, confidentiality obligations and the circumstances in which the information was kept. A factory producing beyond a licence limit requires production and royalty records. Counterfeit goods require an item-specific statutory analysis and may justify Anti-Counterfeit Authority action.

This classification prevents contradictory allegations. A rights owner should not claim that goods are unauthorised copies while also relying on evidence that they came from its own factory, unless it can explain the contractual or territorial issue. Nor should a licence dispute be presented as deliberate piracy without checking the grant, amendments, reporting clauses, termination notice and any sell-off period. Use the IP licensing guide where the contested act may fall inside or outside an agreement.

Keep adjacent routes distinct. Suspected counterfeit stock can be assessed through the counterfeit-goods procedure; an impersonating domain requires the registration and targeting evidence discussed in the domain-name dispute guide. Coordination is useful, but one generic complaint should not be used to bypass the elements of each claim.

Create evidence that can be explained by a witness

For physical goods, make a controlled test purchase. Keep the receipt, packaging, delivery label and payment record; photograph the item as received; label it; and record every transfer. Obtain an authenticated genuine comparator from a source who can explain its provenance. A technical witness should identify the protected and accused features, not merely state that the products “look the same.”

For online conduct, save the complete URL, account identifier, date and time, surrounding page, source file where obtainable, transaction path and any response from the operator. Keep the original exports and device information rather than relying on a cropped image. Sections 106A and 106B of the Evidence Act set conditions for proof of electronic records, including a certificate addressing production and the relevant computer process. Section 78A also directs attention to generation, storage, communication, integrity and identification when weight is assessed.

Prepare a witness map beside the exhibit list. The designer may prove creation; an IT administrator may explain repository history; a salesperson may identify customer confusion; a warehouse officer may prove the sample chain; and a finance witness may explain sales data. Evidence is stronger when the person, document and proposition are linked before proceedings begin.

Identify the actor who can actually stop the conduct

The visible retailer may not be the manufacturer, importer or account controller. Trace invoices, mobile-money details, marketplace records, courier labels, corporate searches and distributor communications. Decide which actor controls stock, listings, payments, source files or confidential access. A narrowly directed preservation request to a platform or service provider can be more useful than a public accusation against every intermediary.

Do not add defendants simply to create pressure. Each proposed party should be tied to an act, evidence and requested order. At the same time, avoid settling with a storefront if the source remains free to supply ten others. A defendant-and-remedy table should show what conduct each actor can stop, what information each holds, and whether an order could be implemented without affecting lawful goods or third-party accounts.

Design the first letter around proof and a measurable response

A useful demand identifies the claimant and authority to act, the precise right, the relied-on registration or ownership chain, the complained-of material, and the specific conduct said to infringe. Attach only the comparison needed to make the case intelligible. Require preservation of identified records and ask for a response capable of verification: source, quantities, dates, customers, remaining stock, account access and the basis of any licence or consent.

The requested undertakings should be operational. “Never infringe again” is difficult to monitor. A better proposal can identify the mark, work, design, product, channel and territory; set a stop date; address remaining stock and files; preserve records; provide a supervised disclosure; and define corrective communication. If settlement discussions are privileged or without prejudice, label and manage them consistently rather than assuming every letter is protected.

Notice is not always the first move. If there is credible evidence that records or stock will disappear, or that a launch will cause immediate harm, obtain advice on preservation and urgent court options before warning the target. That choice requires particular facts, candour and proportionate orders; urgency should never be manufactured by delay.

Match interim relief to the asset and the real risk

Order 40 of the Civil Procedure Rules provides for temporary injunctions where property in dispute is at risk of waste, damage or alienation, and where a defendant threatens injury relating to property in dispute. Rule 10 permits applications concerning detention, preservation or inspection of property. These powers do not make every allegation suitable for an emergency application. The claimant must put forward the right, infringement evidence, urgency and a workable order.

Draft the proposed restraint so a recipient can tell what is prohibited. Identify the sign, work, product feature, confidential material, account or batch. Avoid language that would prevent lawful competition or shut an entire business because one listing is disputed. If inspection, delivery or preservation is sought, describe who will act, what may be handled, how confidential information will be protected, and how an inventory will be kept.

Prepare for challenge as well as grant. Check validity attacks, ownership gaps, permitted-use arguments, delay, acquiescence, independent creation, exhaustion, licence scope and public-interest effects. An interim order can later be discharged or varied, and a weak emergency case may increase costs and disclose the claimant’s evidence without achieving a durable stop.

Choose the forum only after jurisdiction and remedy are checked

Kenyan IP disputes do not all travel through one identical forum. The statutory right, relief, parties and procedural posture determine whether the matter belongs before a court, the Industrial Property Tribunal, a registrar, the Anti-Counterfeit Authority, a domain dispute provider or another body. Patent and registered-design relief under section 106 of the Industrial Property Act is framed for the Tribunal; a trade mark, copyright, passing-off or contractual dispute may require a different jurisdictional analysis.

Confirm standing at the same time. Assemble assignments, employment provisions, commissioned-work terms, licences and authority letters. If a company changed name or acquired a portfolio, reconcile the chain with register records. A beneficial commercial interest is not automatically the same as a statutory right to sue. Where an exclusive licensee or agent is acting, test the relevant Act and agreement rather than relying on the job title of the person who signed the demand.

Ask for remedies that fit what can be proved

Section 35 of the Copyright Act defines infringement, including unauthorised controlled acts and specified importation, and provides the basis for civil relief under the Act. Section 106 of the Industrial Property Act addresses injunction, damages and other relief for protected patents, utility models and registered designs. Trade mark and passing-off remedies depend on the right and pleaded wrong. The remedy schedule should therefore be built claim by claim.

Stopping use may require an injunction, removal of identified listings, delivery or controlled disposal of infringing material, or a licence termination measure. Money may be pursued as damages or, where legally available and elected, another monetary remedy. Disclosure can identify the source and scale. Declarations, costs and interest may matter. Do not request destruction before preserving representative evidence and obtaining the necessary authority.

A settlement can combine undertakings, verified stock treatment, payment, source disclosure, correction of misleading material, audit rights and consequences for breach. It should also say what happens to pending platform reports, regulator files and proceedings. A private agreement cannot promise that a public authority will stop an investigation.

Calculate commercial harm from records, not outrage

Start with the business model. For diverted product sales, identify the relevant units, period, customer group, price and contribution margin. For unlicensed use, examine comparable arm’s-length licences, scope and duration. For confidential information, connect access and use to a lost opportunity or measurable advantage. Separate investigation, corrective marketing and technical remediation costs and prove who incurred them.

Do not multiply every accused unit by the genuine retail price and call the result loss. Some customers may not have bought the genuine product; some accused items may be unsold; and turnover is not profit. Preserve accounting exports and explain ordinary seasonal or market changes. A finance witness should be able to reproduce the calculation from source records and distinguish actual loss from a negotiating position.

Use the resolution to close the control failure

After the immediate dispute, record how the infringement occurred and which control failed. Update registration and renewal ownership, repository permissions, employee exit steps, licence reporting, authorised-distributor records, product authentication and marketplace monitoring. The trade-secrets guide can help where access governance and confidentiality are part of the weakness.

Maintain an enforcement register showing the asset, first report, evidence location, target, notices, proceedings, undertakings, payments and monitoring date. Retain a representative sample and the final comparison. Repeated enforcement becomes faster and more consistent when later teams can see what was proved and how the outcome was implemented.

Request a Kenyan IP enforcement review with the rights schedule, registration and ownership records, licence or confidentiality documents, genuine and accused samples or files, dated captures, test-purchase record, actor map, correspondence, proposed business outcome and available loss data. The review should identify the correct cause of action, preserve admissible evidence and select a proportionate route before an irreversible notice or application is made.

Frequently asked questions

What should a rights owner preserve first after discovering possible IP infringement in Kenya?

Preserve the accused item or original digital material, dated URLs and account identifiers, transaction records, payment and delivery evidence, relevant design or repository history, ownership documents and a genuine comparator. Record who collected each item and every transfer. For electronic records, plan early for the integrity and certificate requirements in sections 106A and 106B of the Evidence Act.

Should an infringement demand letter always be sent before seeking an injunction?

Not automatically. A supported letter may resolve the dispute and obtain source, stock and licence information. However, advance notice can create a genuine risk that stock, accounts or records will disappear. Where urgent preservation or restraint may be needed, the rights owner should obtain advice before giving notice and must present full, accurate and proportionate evidence to the relevant court or tribunal.

Can every Kenyan intellectual property claim be filed in the same court?

No. Forum and jurisdiction depend on the right, statutory remedy, parties and procedural posture. For example, section 106 of the Industrial Property Act frames patent, utility-model and registered-design relief for the Industrial Property Tribunal, while trade mark, copyright, passing-off, contractual, counterfeit and domain matters may follow different routes. Jurisdiction should be confirmed before filing.