intellectual · the “m-kopa” brand. acting on a trade mark infringement and passing off action...

ALGERIA

ETHIOPIA

GUINEA

KENYA

MADAGASCAR

MALAWI

MAURITIUS

MOROCCO

MOZAMBIQUE

NIGERIA

RWANDA

SUDAN

TANZANIA

UGANDA

ZAMBIA

REGIONAL OFFICE:UAE

PROPERTYINTELLECTUAL

“This well-regarded network continues to expand its presence across the continent, with particularly extensive reach across Anglophone Sub-Saharan Africa. It has recently welcomed three new member firms based in Algeria, Morocco and Guinea, continuing the development of the network’s francophone presence and bringing the total count of members and associates to 16 firms across Africa… [The alliance] fosters high levels of member integration and co-operation which benefits and streamlines client service on multi-jurisdictional mandates.” – Chambers Global 2018

ANJARWALLA & KHANNA - INTELLECTUAL PROPERTY PAGE 1

ABOUT US

Anjarwalla & Khanna (A&K) is one of the leading corporate law firms in Kenya and is the largest full-service corporate law firm in East Africa with over 100 lawyers. It is bolstered by the firm’s pan-African reach through ALN, a leading alliance of top-tier independent firms in fifteen countries across Africa.

A&K has offices in both Nairobi and Mombasa, Kenya’s two main commercial centres, providing a broad range of legal services in both. In addition, A&K has established a legal consultancy firm in Dubai, Anjarwalla Collins & Haidermota (AC&H), which provides corporate and commercial legal services out of the Middle East.

In 2017, A&K was named “African Law Firm of the Year – Large Practice” by the prestigious African Legal Awards, which celebrate “excellence, achievement and innovation in the legal profession”. This was the third year in a row and fourth time, since the launch of the awards in 2013, that A&K won this award. In 2017, A&K also won the “Law Firm Innovation” award and was named “M&A Team of the Year “in 2018. In addition, the firm was also named “Kenyan Law Firm of the Year” in 2018 by Chambers & Partners.

Areas of Practice ▷ Intellectual Property

▷ Employment

▷ Dispute Resolution

▷ Banking, Finance & Insolvency

▷ Capital Markets

▷ Commercial

▷ Competition

▷ Corporate M&A

▷ Forensics, Investigations & Compliance

▷ Private Clients

▷ Projects & Infrastructure

▷ Real Estate & Construction

▷ Tax


ABOUT ALN

ALN is an alliance of leading corporate law firms currently in fifteen key African jurisdictions, including the continent’s gateway economies. We have a presence in Francophone, Anglophone, Lusophone and Arabic speaking Africa: Algeria, Ethiopia, Guinea, Kenya, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Nigeria, Rwanda, Sudan, Tanzania, Uganda and Zambia. The firms are recognised as leading firms in their markets and many have advised on ground breaking, first-of-a-kind deals. ALN also has a regional office in Dubai, UAE.

ALN firms work together in providing a one-stop-shop solution for clients doing business across Africa. ALN’s reach at the local, regional and international levels, connectivity with key stakeholders, and deep knowledge of doing business locally and across borders allows it to provide seamless and effective legal, advisory and transactional services across the continent. Our high level of integration is achieved by adherence to shared values and an emphasis on excellence and collaboration. We share sector-specific skills and regional expertise thus ensuring our clients benefit from the synergies of the alliance.

ALN is proud to have won the “Africa Network/Alliance of the Year” award at the 2018 African Legal Awards hosted by Legal Week, which recognises its leadership in the market in legal expertise and innovation, strategic vision, business winning, service delivery across the continent and commitment to CSR.

For more information on ALN, please visit: www.africalegalnetwork.com


MANAGING CREATIONS

OF THE MINDIn a dynamic world where technological, commercial and scientific advancement continually yield IP assets of significant value, it is critical for IP rights holders to find a legal advisor with a keen understanding of the regulatory issues that surround the protection and enforcement of their rights.

A&K offers pragmatic advice to a wide spectrum of medium sized and large national and multi- national clients who have operations in Kenya and across the continent. Our clients operate in various sectors, including food and beverage manufacturing, banking and financial services, healthcare and medical research and development, education and scientific research, energy and natural resources, transportation, and information and communications technology.

A&K advises clients across all fields of IP, including trade marks and franchising, patents, industrial designs and utility models, anti- counterfeit procedures, copyright and plant breeders’ rights.

The A&K IP practice has been ranked in the World Trademark Review’s WTR1000 rankings for the world’s leading trade mark professionals and in Managing Intellectual Property. A&K is a member of INTA, a global association of trade mark owners and professionals.

“Corporate and commercial force Anjarwalla & Khanna showcases a

deft touch on all manner of protection, enforcement and transactional

IP matters, securing its first inclusion in the WTR 1000 this year. As part

of the Africa Legal Network, it has forged excellent connections across

the continent, allowing it to seamlessly coordinate multi-jurisdictional

protection programmes… Anne Kiunuhe has extensive IP know-how and

heads the practice with aplomb.” – WTR1000 2017


DEALSREPRESENTATIVE

IP Rights Enforcement – Contentious Briefs ▶ Advising Grupo Peñaflor, a winery operating

company that produces and exports wine in Argentina, on the strength of their opposition claim against a trade mark application filed in Kenya by a leading South Africa based wine producer.

▶ Representing M-Kopa Kenya, a Nairobi-based company that sells solar-powered products in places not connected to the national energy grid, in a suit filed against M-Kopa seeking orders to bar them and Safaricom from carrying on business under the “M-Kopa” brand.

▶ Acting on a trade mark infringement and passing off action in the High Court on behalf of Agility Logistics, a publicly listed global logistics company headquartered in Kuwait, against Agility Logistics Kenya.

▶ Acting for Hemingways Watamu, a 5 star beach front resort in Kenya, against Hemingways Safaris Africa in respect of a claim for trade mark infringement and passing off in relation to the Hemingways trade mark.

Transactional Trade Marks Briefs ▶ Advising Helios Investment Partners, a

leading Africa-focused private investment firm, on the contractual arrangements relating to the de-rebranding of Telkom Kenya from the “Orange” brand, in connection with its acquisition of 70% of the share capital of Telkom Kenya, by Helios’ subsidiary from France Telecom.

▶ Advising Equity Group, a leading East African bank, on a trade mark licensing structure between itself and ProCredit Bank, a financial institution in the Democratic Republic of Congo, following Equity Group’s acquisition of 79% of the share capital of ProCredit Bank.

▶ Advising Export Trading, the main shareholder in Shanta Retail, which owns a stake in Choppies, a supermarket chain listed in Botswana and South Africa, in structuring a fixed term trade marks licensing arrangement with Ukwala Group and Ukwala Supermarkets, a leading supermarket chain in Kenya.

▶ Representing Godrej Consumer Products, an Indian company listed on the Bombay Stock Exchange and National Stock Exchange in India, in the acquisition of over 400 trade marks in Kenya from Strategic Industries, including drafting and negotiating the IP Transfer and Licence Agreement.


▶ Acting for Rollins, a premier global consumer and commercial services company, in connection with a review of an IP heavy franchise agreement between Orkin Systems, a fully owned subsidiary of Rollins, and a Kenyan entity, including advising on local law compliance, competition law, product liability and consumer protection matters.

▶ Acting for Aon UK, a leading global professional services firm, in connection with its divestiture from its Kenyan subsidiary, Aon Insurance Brokers Kenya, including advising on the brand extraction protocol, conducting diligence on the proprietorship of all registered Aon marks in Kenya and effecting the transfer.

▶ Acting for Exim Bank (Tanzania), a leading Tanzanian Bank, in connection with carrying

out of trademark availability searches, and advising on filing and prosecution of trade mark registration applications in respect of its trade marks in Kenya.

▶ Acting for Flamingo Horticulture Kenya, a leading agribusiness company, in connection with trademark searches, advising on filing and prosecution of trade mark registration applications, recording multiple changes of name and renewals in respect of this client’s entire trade mark portfolio in Kenya.

▶ Acting for Off Grid Electric, a provider of clean and transformative power in Rwanda and Tanzania, including conducting trademark availability searches and advising on filing and prosecution of trade mark registration applications.

Cross Border Trade Marks Filing and Prosecution ▶ Acting for Eastern and Southern African

Trade and Development Bank (formerly PTA Bank), in connection with the filing and prosecution of registration applications in respect of new trade marks, including direct national filings in nine African countries and an international Madrid application covering twenty five jurisdictions, following the Bank’s global rebranding.

▶ Filing and prosecution of various trade mark applications on behalf of Cavendish Africa Mauritius in a number of African countries, including Kenya, Nigeria, Zambia, Ethiopia, Ghana, South Africa, Tanzania and Uganda.

▶ Filing and prosecution of various trade mark applications on behalf of Solvochem Africa in a number of African countries, including Kenya, Nigeria, Zambia, Angola, Ghana, Tanzania, Uganda and filing a regional application at the African Intellectual Property Organization.

▶ Filing and prosecution of approximately 40 trade mark registration applications across Kenya, Uganda and Tanzania on behalf of Al Rama International.

National Trade Marks Filing, Prosecution & Portfolio Maintenance ▶ Filing and prosecution of various trade mark

applications on behalf of Crown Beverages, a subsidiary of SABMiller, operating in the

beverages market in Kenya, and maintaining its Kenyan portfolio of trade marks.

REPRESENTATIVE DEALS


▶ Filing and prosecution of various trade mark applications on behalf of Libya Oil Kenya, one of the leading downstream oil marketing companies operating in the Kenyan market, and maintaining its Kenyan portfolio of trade marks.

▶ Filing approximately 20 trade mark registration applications on behalf of Fresenius Kabi Oncology, an Indian research and development company specializing in oncology medication.

▶ Acting for Apollo Hospital Enterprise, India’s leading super speciality hospital,

in connection with registration of various trademarks in Kenya and advising on brand protection strategy in relation to their entry in Kenya.

▶ Acting for UAE Exchange, a leading brand in money transfer, currency exchange and payment solutions services, in connection with their trade mark registration in Kenya and advisory on brand protection strategy in relation to their entry in Kenya.

Patents ▶ Acting for Nokia, in connection with the

national phase filing and prosecution of sixteen PCT patent applications.

▶ Acting for Kolster oy Ab in the registration of their patent with ARIPO

Copyright ▶ Acting for Sankara Hotels in relation to

the drafting and negotiation of copyright agreements in relation to artwork.

Industrial Designs ▶ Filing and prosecution of various national

industrial design applications on behalf of Crown Beverages.

▶ Filing and prosecution of various national industrial design applications on behalf of Libya Oil Kenya.

▶ Acting for Safepack Industries in the registration of various industrial designs in Kenya.

REPRESENTATIVE DEALS


ACCOLADESAWARDS &

MEMBERSHIPS


KEY CONTACTS

Anne KiunuhePartner, Co-Head of A&K’s IP Group

T: +254 20 364 0222E: [email protected]

Akash DevaniPartner, Co-Head of A&K’s IP Group

T: +254 41 231 2848E: [email protected]

Anne is a Partner in the firm’s Corporate Department and Co-Head of the firm’s Intellectual Property Group. With over ten years of experience as a corporate lawyer, she specialises in intellectual property law, mergers & acquisitions, IT & telecommunications law, and competition law. She contributed to the Kenya chapters of the Intellectual Property Review published by Law Business Research, and the World Trademark Review Yearbook 2017/2018.

Anne is recognised as a leading lawyer by Chambers Global 2017, has been voted one of Kenya’s best M&A lawyers by Best Lawyers International, and is recognised by WTR1000 2017. In 2015, Anne won the CfC Stanbic Rising Star Award in the Professional Services category.

Akash is a Partner in the firm’s Corporate Department and Co-Head of the firm’s Intellectual Property Group. He principally advises on intellectual property, banking, mergers & acquisitions, joint ventures, private equity investments, commercial property and shipping.

Akash also has cross border practice experience, having advised on commercial transactions in various parts of Africa and he also advises foreign clients investing in Kenya. Akash has participated in various legal and business forums both locally and internationally and regularly writes on various legal topics. Akash has been recognised as a leading lawyer by IFLR1000, Best Lawyers International, Finance Monthly Law, and Global Law Experts.


KEY CONTACTS

Aisha AbdallahPartner, Head of Dispute Resolution

E: [email protected]

Shem OtangaSenior Associate


Aisha is Head of the firm’s Disputes Resolution Department. Her practice focuses on all aspects of commercial litigation, including intellectual rights enforcement. Aisha is dual qualified as an Advocate of the High Court of Kenya and Solicitor of England and Wales. She has over 18 years of experience in intellectual property, commercial litigation, real estate and environment disputes, fraud and anti-corruption, public law issues, public procurement disputes, employment, contentious insolvency issues, multi-party mediation, and arbitration.

Aisha regularly writes and speaks at conferences on a wide range of contentious issues and is the co- author of the Kenyan chapter of the 6th edition of the International Arbitration Review. Aisha is recognised as a leading lawyer by Chambers Global 2017.

Shem is a Senior Associate in the firm’s Corporate Department. His practice focuses mainly on intellectual property law, corporate and commercial law and regulatory advisory work across various sectors of commerce, technology and industry. He has advised large international clients, including a Fortune 500 company and an Ivy League university in contentious trade mark proceedings. Shem has served as a member of Intellectual Property and ICT Law Committee of the Law Society of Kenya.

Shem has an Advanced Certification in General Intellectual Property Law, and a separate certification in Patent Law from the World Intellectual Property Organisation Academy in Geneva. Shem has previously worked at Hamilton Harrison & Mathews.


ALN

FIRMS

ALGERIA Bourabiat Associés Chemin Mackley, Résidence de la Présidence, Bat C, Ben Aknoun, Alger, Algérie Tel: DZ: +213 775 388 597 | FR: +33 660 790 822 Email: [email protected]

ETHIOPIA Mesfin Tafesse & Associates Tensae Building, 2nd Floor, Office No. 001, Bole Road, Cape Verdi Street Tel: +251 11 667 2341 +251 11667 2271 Email: [email protected]

GUINEA SD Avocats Carrefour de Nongo, Pont de Kaporo, à côté de l’Ecole Centrale Tel: GN +224 620 56 54 95 | FR +33 7 78 02 72 84 Email: [email protected]

KENYA Anjarwalla & Khanna 3rd floor, The Oval, Junction of Ring Road Parklands & Jalaram Road Westlands Tel: +254 0 203 640 000 | +254 0 703 032 000 Email: [email protected]

MADAGASCAR Madagascar Law Offices Immeuble APPEL 2ème étage– Route des Hydrocarbures Ankorondrano – Antananarivo – Madagascar Tel: +261 20 23 256 23 Email: [email protected]

MALAWI Savjani & Co. Ground Floor, Hannover House Hannover Avenue - Blantyre, Malawi Tel: +265 1 824 555 Email: [email protected]

MAURITIUS BLC Robert & Associates 2nd Floor, The Axis, 26 Cybercity Ebene 72201 Mauritius Tel: +230 403 2400 Email: [email protected]

MOROCCO BFR & Associés 201, Boulevard Zerktouni Casablanca, Morocco Tel: +212 5 22 94 96 77 Fax: +212 5 22 94 85 25 Email: [email protected]


ALN FIRMS

MOZAMBIQUE ABCC Av. Kenneth Kaunda, 660, Bairro da Sommershield, Maputo, Mozambique Tel: +258 823 026 110 | +258 843 894 872 Email: [email protected]

NIGERIA G. Elias & Co. 6 Broad Street Lagos, Nigeria Tel: +2341 4607890 | +2341 2806970 Email: [email protected]

RWANDA K-Solutions & Partners KN 50ST Ganza -Kiyovu Nyarugenge, Kigali City, Rwanda Tel: +250 727 000 973 Email: [email protected]

SUDAN Omer Ali Law Firm 3rd floor, Tower of Arab Authority for Agricultural Investment and Development Plot 2/1, Block 9/E, Khartoum East, Sudan Tel: +249 155 155 554 Email: [email protected]

TANZANIA ATZ Law Chambers 1st Floor, Opal Place, 77 Haile Selassie Road, Masaki, Dar es Salaam, Tanzania Tel: +255 22 260 1151/2 Email: [email protected]

UGANDA MMAKS Advocates 4th Floor, Redstone House, 7 Bandali Rise, Bugolobi, Uganda Tel: +256 414 259920 Email: [email protected]

ZAMBIA Musa Dudhia & Co. 3rd Floor, Mpile Office Park, 74 Independence Avenue Tel: +260 211 253822 Email: [email protected]

UAE (Regional Office) Anjarwalla Collins & Haidermota Saaha Offices, Block C, Office 501A The Palace Downtown Tel: +971 4 4529091 Email: [email protected]

“[A&K] is arguably the strongest firm currently operating in the market… [and holds] the title of the largest firm in Kenya.” – IFLR100

ANJARWALLA & KHANNA | ALN Nairobi

The Oval, 3rd Floor, Junction of Ring Rd., Parklands & Jalaram Rd. P.O. Box 200-00606, Sarit Centre, Nairobi, Kenya

T: +254 20 364 0000, +254 70 303 2000 E: [email protected]

Mombasa SKA House, Dedan Kimathi Avenue

P.O. Box 83156-80100, Mombasa, Kenya T: +254 41 231 4000, +254 41 231 2848


www.africalegalnetwork.com/kenya

intellectual · the “m-kopa” brand. acting on a trade mark infringement and passing off action...

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