• +254 (0) 20 364 0000
  • +254 (0) 703 032 000
  • soo@africalegalnetwork.com
  • ALN House, Eldama Ravine Close, Off Eldama Ravine Road, Westlands
  • P O Box 200-00606, Sarit Centre, Nairobi, Kenya

Shem Otanga | Senior Associate | Anjarwalla & Khanna

Background

Shem is a senior associate in the corporate and commercial department. His practice focuses mainly on intellectual property, ICT, employment, corporate and commercial law and regulatory advisory work across various sectors of commerce, technology and industry.


Membership in Professional Societies

  • Law Society of Kenya
  • Member, Famous and Well Known Marks Committee, International Trade Marks Association, (INTA), (January 2018 to – present).
  • Member, IP & ICT Law Committee, Law Society of Kenya (LSK – Nairobi Chapter) (May 2017 to present).
  • Member of the Intellectual Property and ICT Law Committee of the Law Society of Kenya (LSK) (May 2012 – January 2014).

Professional Qualifications

2016: Advanced Certification in Patents, World Intellectual Property Organisation (WIPO) Academy, Geneva

2012: Advanced Certification in Intellectual Property Law, World Intellectual Property Organisation (WIPO) Academy, Geneva

2010: Postgraduate Diploma in Law, Kenya School of Law

2008: LL.B, Bachelor of Laws, University of Nairobi, Kenya

JAN – MAY 2004: Advanced Certification in General Insurance Practice, CCI, College of Insurance


Career Summary

JAN 2017 – DATE: Senior Associate, Anjarwalla & Khanna

2016: Principal Associate, Anjarwalla & Khanna

2010 – 2015: Associate, Hamilton Harrison & Mathews

2008 – 2010: Intern at Hamilton Harrison & Mathews

JUNE – DEC 2007: Legal Research Assistant, Mars Group International


Publications

Shem has co-authored the following publications:

  1. The exclusive Kenyan chapters in the 5th and 6th editions of the Intellectual Property Review (2016 & 2017), a leading global publication on intellectual property laws that apply in various jurisdictions around the world (Co-authored with Anne Kiunuhe).
  2. The Kenyan Chapter for the 2017/2018 World Trade Mark Review Year Book (Co-authored with Anne Kiunuhe).
  3. Data Protection Guide in Kenya – Thomson Reuters & Practical Law (2017) (Co-authored with Wangui Kaniaru).

Areas of Expertise

  • Intellectual Property
  • Information and Communications Technology (ICT)
  • Employment
  • Corporate and Commercial

Languages

  • English
  • Kiswahili

Location

  • Nairobi

Top Matters

Non-Contentious Intellectual Property Briefs

Shem advised on the following transactions:

  • Advising a pan African bank on its rebranding process including carrying out trade mark availability searches across 35 jurisdictions and applying for the registration of the trade marks through both national and international (Madrid system) regimes;
  • Acting for a chemicals & allied products retailer located in Dubai, in connection with filing and prosecution of approximately forty trade mark registration applications across Kenya, Uganda and Tanzania;
  • Acting for a pan African university, in connection with filing and prosecution of various trade mark applications in a number of African countries, including Kenya, Nigeria, Zambia, Ethiopia, Ghana, South Africa, Tanzania and Uganda;
  • Advised a leading commercial bank with regional presence on the protection of its domain names against cyber squatters;Advised a Kenyan trade union in the banking sector on copyright protection in relation to software;
  • Advised a Kenyan software developer on protection of his patent rights in the software and facilitating the filing of a Kenyan as well as an international patent application covering 27 jurisdictions across the world under the Patent Co-operation Treaty (PCT). The patent has already been granted in South Africa and was recently approved for granting in Singapore, South Korea, Australia and Singapore.
  • Advised a leading US based multinational corporation in the field of agrochemical and agricultural biotechnology on intellectual property and data protection in relation to the submission of its research data to the National Biosafety Authority. My advice covered the current legal framework for data protection under Kenyan law and the best method of going about protecting the confidentiality of the data and the intellectual property therein.
  • Advised a State Corporation in the energy sector on the protection of the copyright interests in its internally developed sector specific work manuals.

Contentious Intellectual Property Briefs

Shem acted in the following cases:

  • Represented an Ivy League University in successful trade mark opposition proceedings against a local Kenyan company that had wrongfully sought to register the said university’s trade mark;
  • Represented a Fortune 500 computer technology company in successful trade mark opposition proceedings against a local Kenyan company that wrongfully sought to register the computer technology company’s trade mark;
  • Represented a Fortune 500 corporation that manufactures a world famous brand of feminine hygiene products in successful opposition proceedings lodged on its behalf against International Trade Mark Application Number 1154276;
  • Acted as assisting counsel in successful trade mark opposition proceedings filed on behalf of an international soft drinks manufacturer against Trade Mark Application Numbers 62286, 62287 and 67859 (Words And Device) in Class 32 (2010 – 2012);
  • Represented an international soft drinks manufacturer in successful trade mark opposition proceedings against Trade Mark Application Numbers 64721 which had been filed by a Kenyan distribution company (2012 – 2015);
  • Represented one of the world’s leading beer manufacturers in opposition proceedings against two trade mark registration applications filed by an international competitor and defending the said client in expunction proceedings filed by the said competitor against the client’s existing trade mark registrations. This case represents an ongoing dispute that began over 100 years ago and which has been deliberated upon in several jurisdictions across the world.
  • Represented an international South African based beer manufacturer in parallel trade mark expunction proceedings against two trade mark registrations effected through the international Madrid Protocol System.
  • Represented a leading Japanese vehicle manufacturing company in trade mark expunction proceedings against a local agro-science company that wrongfully registered one of the car manufacturer’s trade marks in Kenya.
  • Represented a leading South African based payment solutions and transaction processing services provider before the Patent Tribunal in an appeal against the refusal of its application for grant of a patent in respect of an invention relating to electronic financial transactions and methods thereof.
  • Represented one of the world’s largest tobacco companies before the Patent Tribunal in an appeal against the refusal of its application for grant of a patent in respect of an invention relating to a method for processing tobacco.