KENYAN LAW AND POSITION WITH REGARDS TO PARALLEL IMPORTS.

Parallel imports are goods produced genuinely under protection of a trademark, patent or
copyright, placed into circulation in one market and then imported into a second market without
the authorization of the local owner of the intellectual property right or licensed local dealer. 1
The Industrial property Act of 1989 prohibited parallel importation, through recommendation
from the National Council for Science and technology’s legal and patents committee, legalized
and recognized parallel importation through Industrial Property Act of 200.

Kenya has enacted laws that are set to provide an avenue for parallel importation with has
immense benefit on the public. In line with Article 46 on the rights of consumers for their health,
safety and economic interest to be protected,2 there is need to allow parallel importation to
mitigate on expensive products. The Industrial Property Act on Section 58(2) sets the limitation
of rights as to include “that rights under the patent shall not extend to acts in respect of articles
which have been put on the market in Kenya or in any other country or imported into Kenya by
the owner of the patent or with his express consent”3

In the case of LRC Products Limited versus Metro Pharmaceuticals Limited, 4 the plaintiff sought
an injunction restraining the Defendant from importing, packaging, supplying, selling or offering
for sell, distributing or otherwise dealing with ‘Durex’ products. The defendant was importing
and selling Durex products bearing the marks similar or strikingly similar to the trademark
owned by the plaintiff and that the Defendant was infringing exclusive rights over the ‘durex’
products, in territory of Kenya. In determining this, the court cited the case of Lord Healthcare
limited versus Salama Pharmaceuticals limited the court held that neither the plaintiff nor the
Defendant were the manufactures of the inhaler.5

Cipla limited gave the plaintiff exclusive rights to distribute in Kenya. The defendant is selling
under license from Fujisawa Deutschald who has international protection under Paris convention.
The court held that the inhaler products are supplied by Cipla limited in more than one country
and parallel importation allows for importation of the same product from such other markets. The

1
Keith E. Maskus, Parallel imports, 23 ‘The World Economy’ 1269,1271 (2000)
2
Constitution of Kenya, 2010 Article 46
3
Industrial Property Act, 2001 Section 58(2)
4
LRC Products Limited versus Metro Pharmaceuticals Limited [2016] eKLR
5
Lord Healthcare limited versus Salama Pharmaceuticals limited [2008] eKLR
court thus held that provided one has paid custom duties and other tax obligation that may
arise, one will not have breached the trademarks rights of the owner.

Unless a trademark owner or an authorized licensee can persuasively argue that the parallel
importer has infringed its mark under the trademarks Act, current case law has established a
precedent that favors parallel importers. It is therefore for the aggrieved party to prove how
parallel importation has occasioned breach through strict liability. 6 Parallel importers should
ensure that no alterations or other adoptions are made to the product or its packaging, as any
changes could give rise to grounds for infringement. In the pharmaceuticals sector, parallel
imports are not only allowed but also encouraged.

6
ibid