Shem Otanga

  • +254 731 086 649
  • sotanga@kieti.co.ke

Shem Otanga | Partner

BACKGROUND

Shem’s practice focuses mainly on intellectual property, data protection, ICT law, commercial law, employment and retirement benefits schemes law as well as regulatory advisory work across various sectors of commerce, technology and industry. He was recognised by Chambers Global for his work in intellectual property in 2019 and 2020 and has been ranked as a recommended lawyer by the World Trade Mark Review for three years in a row from 2018 to 2020.

Market sources cited by Chambers Global have referred to Shem as “a rising star in the Kenyan IP market,” and credit him for “having the expertise to get all the trade mark processes done.” He is also cited as being “…well versed in contentious and non-contentious mandates” and with assisting clients with matters such as IP asset holding structures, trade mark opposition and copyright prosecutions (Chambers Global 2020).

The World Trade Mark Review lauds him for being “ . . .very responsive, knowledgeable and skilled . . .”. WTR1000 goes further to cite him as a provider of “. . . well-rounded and considered advice on the protection of brands in East Africa,” and also as being “ . . .extremely prompt and thorough in all communications.” (WTR1000, 2020).

He advises Kenyan and international clients from diverse sectors on IP asset-holding structures, acquisition, securitization, prosecution and enforcement. His practice has also grown into the field of employment and labour relations as well as retirement benefits where he has advised large hospitals and pension fund administrators. He also has vast expertise in providing regulatory advice in relation to telecommunications, media, technology and data protection.

Shem has previously worked at Dentons Hamilton Harrison and Mathews and Anjarwalla & Khanna LLP. He also worked on secondment at Mayer Brown International LLP in London in 2018.

 

ACADEMIC QUALIFICATIONS

  • Diploma in Law, Kenya School of Law (2009)
  • LLB (Honours 2nd Upper,) University of Nairobi (2008).

 

AWARDS

  • International Lawyers for Africa (ILFA) Secondee, 2018
  • Mayer Brown International LLP, Pro Bono Achiever Award, 2018
  • Recommended Lawyer, World Trade Mark Review (WTR1000), 2018, 2019 & 2020
  • Associate to Watch, Chambers Global, Intellectual Property, Kenya 2019 and 2020.

 

WORK HIGHLIGHTS

 Transactional/Advisory IP/ICT/TMT & Data Protection Experience

  • Advising a leading Kenyan-listed bank on the review and re-negotiation of the material terms of its key banking software licence granted by Oracle Inc. including a review of the historical series of amendments to the licence and redrafting the 4th amendment thereto.
  • Advising a Kenyan betting, gaming and lotteries operator on its internal restructuring including the offshoring of its IP assets and licensing back of the same to its subsidiaries/joint ventures in various African jurisdictions including the preparation of IP assignment and licensing agreements.
  • Advising a leading American pest control company on a proposed franchising arrangement including the licensing of its marks to a Kenyan company and advising on arising anti-trust issues.
  • Advising a leading international fertiliser manufacturer on the data protection implications under the European Union’s General Data Protection Regulation (EU GDPR) as well as Kenyan and Tanzanian data protection law in relation to the collection of personal data for its COVID 19 related aid program for famers in Africa as well as the drafting and review of its software platform’s terms of use and various privacy policies to ensure compliance with data protection law under the said regimes.
  • Advising a leading global money remittance company on the legal and regulatory framework for telecommunication-based advertising in Kenya.

 

 Contentious Intellectual Property Experience

  • Representing 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.
  • Representing a leading international motor vehicle manufacturer in 3D trade mark opposition proceedings against an international SUV manufacturer.
  • Representing 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.
  • Acting as assisting counsel in successful trade mark opposition proceedings filed on behalf of a Dubai based soft drinks manufacturer against Trade Mark Application Numbers 62286, 62287 and 67859 (Words and Device) in Class 32 (2010 – 2012).
  • Representing one of the world’s leading beer manufacturer 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.
  • Successfully representing a Kenyan paper bag manufacturing company on the recovery of its domains names from a cyber-squatter.

 

Non-Contentious Intellectual Property Experience

  • Acting for one of the world’s largest security companies in connection with filing and prosecuting various trade mark applications in a number of African countries, including Kenya and Tanzania.
  • Advising a leading Kenyan bank with regional presence on its rebranding process and filing and prosecuting the registration of its new trade mark in Kenya as well as co-ordinating the filing and prosecution process through local counsels in various sub-Saharan African countries including DRC, Mozambique, Rwanda and Ethiopia.
  • Advising a pan African bank on its rebranding process including filing and prosecuting the registration of its marks through both national and international registration systems (Madrid) as well as co-ordinating the filing and prosecution process through various local counsels in sub – Saharan Africa for non-Madrid member states.
  • Acting for a pan African university, in connection with filing and prosecuting various trade mark applications in a number of African countries, including Kenya, Nigeria, Zambia, Ethiopia, Ghana, South Africa, Tanzania and Uganda.
  • Advising a Kenyan inventor on patent protection for his software gaming invention and facilitating the prosecution of a Kenyan as well as an international patent application covering 27 jurisdictions under the Patent Co-operation Treaty (PCT).

 

PROFESSIONAL MEMBERSHIP:

  • Law Society of Kenya.
  • International Association of Privacy Practitioners (IAPP).
  • Member, Famous and Well Known Marks Committee, International Trade Marks Association, (INTA), (January 2018 to – present).
  • Council Member, Africa Global Advisory Council (GAC), International Trade Marks Association, (INTA), (February 2020 to – present).

 

PUBLICATIONS

 Stretching Beyond Borders: The Extra-Territorial Applicability of the Kenyan Data Protection Act.

  • Kenyan Chapter for the 2017/2018 World Trade Mark Review Year Book.
  • Exclusive Kenyan Chapter in the Intellectual Property Review, 2016 & 2017 editions.
  • Data Protection Guide in Kenya – Thomson Reuters & Practical Law (2017 and 2018).
  • World Bank Digital Business Indicators Project – 2019.
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