Kenya's best kept brand theft myth
By JUSTUS ONDARI
Posted Monday, May 24 2010 at 15:24
In the confusion of shouts and haggling at Nairobi’s Kariokor Market, a middle-aged woman makes a pretty penny.
Ms Monica Ndunge Syuki, a forty-something mother with a rehearsed smile beckons us to her store stocked with the hand-woven handbags made from sisal and leather trimmings, known popularly as kiondo. “We have reduced prices of because the economy is bad),” she says in accented Swahili, lifting a white-and-brown bag that costs Sh300.
Our quest to this bustling market on the fringe of Kenya’s capital is to find out the fate of the age-old basket mostly associated with Kikuyu and Kamba women and, in a weird coincidence, the shawl wrapped around her waist, known as kikoi. “The Japanese have taken our kiondo and even kikoi,” says Ms Syuki, reinforcing what turns out to be the most perpetuated patenting myth in Kenya. “Chinese are now making kiondos using machines.”
The kiondo and kikoi are hot brands globally, especially in western countries where they continue to pull female buyers smitten with the fine African touch and style. Just like Ms Syuki, most Kenyans believe the Japanese “stole” the KIONDO brand by patenting (protecting) it, and a British company – Kikoy UK Company – registered KIKOY as a trademark for textile goods.
“It is not good for us and the government should do something about it,” says Ms Syuki, who says she has been in the kiondo business for the past 15 years. But the Kenya Industrial Property Institute (KIPI), the State-run parastatal mandated to protect four elements of intellectual property rights – patents, utility models, industrial designs and technovations – has some good news: Kenya still has claim to the two name, after all.
“Kenyans, including Ms Syuki, should stop worrying about the purported lose of both the kiondo and kikoi for none has been lost,” said the principal examiner at KIPI’s Technical Services Department Sylvance Sange, “No Kenyan business has been refused entry into either Japan or the UK following claims of intellectual property rights by anybody there.”
A search conducted at the Japanese patent office database covering 1984 to date for information to confirm that kiondo is patented in Tokyo only found industrial weaving of baskets, some made of fabric or paper materials. “Given that several baskets are patented the interpretation shows that those protections are restricted to process as opposed to product patents. That means kiondo basket suffered no exclusion in the Japanese market,” he says in a research paper titled Kiondo idea theft: An intellectual property myth.
A further search in the Japanese trademark database to establish whether the KIONDO was registered as a brand name for fabrics and baskets in Japan returned negative results. While ruling out any patenting of kiondo, he points out that Kikoy UK Company’s application on August 26, 2006, to register the word KIKOY as a trade mark for textile goods was rejected when the applicant failed to meet UK Patent Office requirements after some parties objected to the application.
Mr Sange said the two items are already enjoying express intellectual property protection of the law. In the intellectual property parlance, the kiondo enjoys protection as information in the public domain, which cannot be subject to exclusive rights in favour of an individual against others while the kikoi is protected as a generic name of a product that should be available for use by all.
In what will disappoint Kenyans, KIPI says the two products cannot be panted either in Kenya or any other country, including Japan and the UK. Lack of clear individual ownership of kiondo has left it a property of the communities. Given that it was created in a local setting to attend to a local need, kiondo seems to fit well as traditional knowledge – passed on from generation to another.
“The problems faced in Kenya with regard to protection of traditional knowledge is that so far there is no legislative framework in place for it,” said Mr Sange. While the Kenyan Industrial Property Act 2001 provides for avenues through which the kiondo can be patented, he downplays the significance of such a move. “Such form of protection can only apply locally,” he says.
Similarly, while the Japan Patent Office (JPO) can protect an idea such as kiondo by way of granting a patent, it means such an idea is patented just in that country. “Upon a successful contest of that grant by a third party the patent is invalidated,” he said, adding that if a product patent for kiondo existed, it lacked force of exclusion in the Japanese market.
Perhaps more significantly, a granted patent lasts for a maximum of 20 years from the filing date and the protection period is not renewable, which means a patent becomes public upon expiry of this period. Given that the notion of kiondo being patented in Japan has lasted for quite some time, the purported denial of its rights to ownership has lapsed.
“The product Kiondo was never patentable in Japan. It failed the novelty test in Japan. It was not patentable in Kenya either, due to its failure in both novelty and industrial application tests,” he said. On the other hand, the quality and consistency of kikoi products can get protected in Kenya through registration of distinctive trademarks at KIPI.
However, its officials say the word KIKOI alone cannot be registered for textile goods, as it is generic to those products when its Kiswahili meaning is considered. Kiswahili is recognised in Kenya as a national language. “A generic term cannot at all cost make a distinctive trade mark,” Mr Sange says. In Kenya, this is provided for in Section 12(d) of the Trade Marks Act, which reads:
“A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname….” Otherwise, in case the word is crafted with other distinctive elements forming a composite mark for textile goods, then the Act requires the applicant to enter a disclaimer to the exclusive use of the word ‘kikoi’ separately.
This means the term is then allowed to silently exist as part of the label, and anybody else is allowed to use it for the same goods when coined differently. Generic words are generally made available for use by anybody free of charge. According to Mr Sange, however, the word kikoi is available for protection in other non-descriptive category of goods or services.
There is no legal hindrance whatsoever before the UK Patent Office in registering the word kikoy as a trade mark for textiles in the UK. That means, if kikoi products were manufactured in the UK and sold within its territory as opposed to being imported from elsewhere, the applicant was had every right to register the word kikoy as a trade mark for textiles and legally use it there.
Any protest from another country against that application could not be much of an issue, particularly if it was meant to legally compel the UK Patent Office to refuse registration against the interest of the UK applicant. In the absence of local (UK) manufacturing, the only difficulty facing that registration was on the part of the holder concerning enforcement of his entitled exclusive rights in the UK yet he had to source it from a number of African countries that manufacture kikoi products.
But this does not open the door for Kenyans to claim ownership of kikoi or kiondo, changing very little for Syuki and many other Kenyans. “Kenya’s move to seek protection singly would open another chapter all together where other African countries who manufacture kikois could claim an act of aggression against them over what they also claim a stake,” says Mr Sange. [email protected]