MMC ASAFO (“the Firm”) is an established law firm that specializes in Intellectual Property Law, Corporate/Commercial Law, Property/Conveyancing Law, Banking Law and FinTech, Capital Markets Law, Telecommunications Law, Energy Law, Environmental Law, Labour Law, Insurance Law, regulatory & Tax Law. The Firm was established in the year 1995 and its headquarters are in Nairobi, with a branch office in Mombasa at Mombasa Trade Centre. MMC ASAFO has its own state-of-the-art offices at its Nairobi Offices headquarters known as MMC Arches.
In 2019, the Firm signed a teaming agreement with an international law firm ASAFO & CO. to bring to the market the first real Pan-African law firm with international expertise an “on-the-ground” experience in Africa. Asafo & Co. has presence in the cities of Nairobi, Mombasa, Paris, Casablanca, Abidjan, Johannesburg, London and Washington DC which serve their respective hubs in Africa, Europe and America. This move has built on years of practice and expertise to provide extensive capability for client advisory in each of these regions.
1.2 IP Practice at MMC Asafo
The Intellectual Property (IP) practice, within the Commercial Department is one of the largest in Kenya. It has cut out a niche for itself for offering practical solutions in a wide range of IP matters including trademarks, copyrights, patents, utility models, industrial designs, domain names, utility models and plant breeders’ rights in Kenya and the world over. The IP department boasts of skilled IP advocates who are authorised to practice before the Kenya Industrial Property Institute (KIPI). The department is headed by Esther Omulele (Managing Partner) and assisted mainly by two (2) other Associate Advocates, Melissa Wango Were and Sylvia Kimani who are experienced in advising in both contentious and non-contentious enforcement of IP rights. As a result of its experienced base of lawyers, the department is regularly instructed by Clients with large IP portfolios.
The department advises leading multinationals, established and developing businesses from various target sectors including manufacturing, technology and telecommunications. Over the years, the department has built good working relationships with examiners and senior officers at various IP offices in various jurisdictions in Africa. This cordial relationship facilitates the Firm’s regular transactions with the IP offices hence enabling the practice to attend to clients’ instructions promptly and comprehensively.
The Firm has an established network of IP associates in African Countries such as Uganda, Tanzania, DRC, Ethiopia, South Sudan, Rwanda, Malawi, Mauritius, Cote d’ Ivore, Burundi and Zimbabwe, able to handle IP related matters in other African Regions such as in East and Central Africa, the African Regional Intellectual Property Organisation (ARIPO), the African Intellectual Property Organisation (OAPI) and the World Intellectual Property organization (WIPO).
The Firm also has an established network of IP associates in the USA as authorized members of the American Intellectual Property Law Association and Europe able to handle IP related matters in the USA and European Union.
The department works with clients in leading multinationals across the globe, established businesses from various target sectors including financial services and FinTech, intellectual property, manufacturing, technology, telecommunications, pharmaceuticals and healthcare, hospitality and fashion & design. The Firm has over the years been ranked by leading legal directories including Managing IP Stars, WTR1000, Chambers and Partners, Legal 500, IFLR1000, Africa Legal Awards and Deal Markers Africa.
1.3 Practice Areas and Sector Specializations
The Firm works with regulated industries such as banking, financial services sector, pharmaceuticals, medical services, energy and telecoms among others. The IP practice offers a full range of services in IP including the following:
• Filing, prosecution and maintenance of intellectual property rights locally, regionally and internationally: Trademarks, Patents, Utility Models, Industrial Designs. Domain names and Utility models including searches;
• Applications for registration and prosecution of Copyright and Plant breeders’ rights;
• IP Litigation including:
- Opposition proceedings;
- Removal or revocation (expungement) proceedings; and
- Enforcement actions before the High Court of Kenya.
• Commercial aspects of IP including:
- Drafting of licence agreements, deeds of assignment and franchise agreements;
- Intellectual property audits;
- Intellectual property valuation;
- Due diligence; and
- Transfer of IP rights in mergers and acquisition transactions.
• FinTech aspects including:
- Representing FinTech institutions based in and outside Kenya in all matters relevant to the FinTech practice area;
- Incorporating FinTech institutions and assisting with regulatory approvals and advising on continuing compliance obligations;
- Assisting FinTech institutions in monitoring the legislation and regulatory changes in the region relating to new technology based financial services such as digital lending, cryptocurrency and ledger technology;
- Representing FinTech institutions in participating in the enrichment of sectoral laws such as data protection legislation, consumer protection legislation and telecommunication laws;
- Providing general legal advisory services to FinTech entities operating in the digital lending, payment systems and money remittance areas; and
- Advising on the regulatory issues relating to provision of services in Kenya, establishment of institutions in Kenya, tax considerations, repatriation of funds and data protection;
• Protection of novel ideas leading to patentable inventions with an economic benefit to the population;
• Anti-counterfeiting services; and
• Legislative and regulatory advisory services.
