John Syekei was admitted as an Advocate in 2005. He trained at Daly & Figgis Advocates and Deloitte and headed the Intellectual Property Department at Muriu Mungai & Co Advocates as a Partner until joining Coulson Harney in March 2010. He was admitted into the Coulson Harney partnership on March 1 2011.
John advises clients on M&A transactions in the IT, Telecommunications and Healthcare sectors. He is increasingly doing deals in the above areas. His practice areas and experience cover commercial intellectual property advice, advice on drafting and/or negotiation of information technology agreements on seller or buyer side, and advice on the protection and enforcement of trade mark, patent, copyright and industrial designs. He practices across Africa directly for local clients. He also acts for clients in intellectual property infringement actions, anti-counterfeiting raids, due diligence investigations and reports, drafting of licensing and franchise agreements, trade mark oppositions, trade mark cancellations and domain name dispute resolutions before WIPO.
He advises a number of leading technology companies in the world including Google, Facebook, Microsoft and IBM. He also acts as the Kenyan counsel on regulation, compliance and corporate matters for Philip Morris International.
Assignment
- Successfully represented 24.com, a South African subsidiary of the leading multinational media group Naspers, in relation to a domain dispute against a Nigerian entity. The matter was decided by the World Intellectual Property Organisation Arbitration Dispute Resolution Centre as the domain host was based in the United States and the parties based in different jurisdictions. The disputed domain was transferred to the client;
- Advised PineBridge Investments East Africa Limited on the sale of its information tracking software system to Craft Silicon;
- Advised Safaricom Limited on its recording artiste joint venture with Homeboyz Entertainment Limited and assignment of copyright from the music artistes to Safaricom Limited;
- Advised GSK PlC in relation to the filing of a Counterfeit action before the Kenyan Anti- Counterfeit Agency resulting in the successful raid, seizure and destruction of a consignment of counterfeit products infringing on the protected trademark rights of GSK;
- Advised ADIDAS GmbH in relation to the filing of a Counterfeit action before the Kenyan Anti- Counterfeit Agency resulting in the successful raid, seizure and destruction of a consignment of counterfeit products infringing on the protected trademark rights of ADIDAS;
- Advising GSK PlC in a High Court litigation action against a Korean Pharmaceutical Company infringing its trademark in Kenya;
- Advising Wananchi Group Limited in the negotiation and drafting of a Wifi Agreement with Google and Equipment supply contract with BelAir Corp, Canada;
- Advising Centum in a Joint venture technology transaction with ETranzact Global and assignment of IP and technology to a local Kenyan company and a Mauritian entity;
- Advising Potomac Tobacco Limited in a litigation action against BAT SA ( Brands) Limited in Kenya;
- Advising Bimeda Pharmaceutical PLC, Ireland, a leading veterinary pharmaceutical company, in an M & A transaction- purchase of the entire issued share capital in Assia Kenya Pharma Limited from Phibro Corporation;
- Advising Steptoe & Johnson LLP in the sale of Sara Lee Corporations Biocidal local product brands and registrations to Johnson & Johnson PLC;
- Advising MIH East Africa in a copyright infringement action with PW Andrews ( Universal Music Group) before the Kenya Copyright Board;
- Advising Tanga Pharmaceutical and Plastics Tanzania Limited in the reorganization and protection of its trademark portfolio in Kenya;
- Advising Mjengo Limited in the in the reorganization and protection of its trademark portfolio in Kenya, Tanzania, Rwanda and Burundi;
- Advised Engineering Development Limited in the drafting and filing of a national and PCT patent application;
- Advised Glenmark Pharmaceuticals, a leading Indian generic manufacturer in a Patent revocation action in Kenya before the Industrial Property Tribunal in respect of a Perindopril erbutamine based ARIPO patent owned by Les Labaratoires Servier, a French pharmaceutical company - 2008 and 2009;
- Advising Vestergaard Frandsen Group SA in a complex Patent Entitlement and Breach of Confidentiality action in the High Court of Kenya as well as a Patent entitlement action before the Industrial Property Tribunal 2009, 2010, 2011. This action is being litigated in 9 other countries simultaneously;
- Currently advising various international law firms from US, UK, South Africa and South America on the handling of the client's trademark and patent portfolios in East Africa.
Publications
- Article for Managing Intellectual Property on the new Anti counterfeit Law and the impact on the Kenyan Pharmaceuticals Industry September 2010.
- Standing Committee on Drafting Standard Licensing Contracts – LES 2010 (one of 2 African IP lawyers in the team) (ongoing).
- New developments in Trade Marks Law in East Africa – Presentation at INTA meeting in 2010 Boston May 22nd – 27th.
- World Bank – Doing Business in Kenya Articles – 2007, 2008 and 2009.
- Council for Legal Education Seminar organized by the Law Society of Kenya on Drafting Source Code Escrow Agreements in Technology Deals held at the Panari Sky Centre on 8th October 2010.
- Importance of Confidentiality Agreements and their role in Intellectual property law-presented to *iHub-technology, innovation, community-software developers and computer programmers-November 2010.
- Kenyan contributor to Country Index- Trademark practitioners’ guide to IP law development worldwide- (ongoing).
- Kenya’s Intellectual Property Laws Come of Age-presented to a Coulson Harney clients’ seminar- November 2010.
- Mentor of the *iHub-technology academy - 2011.
Qualifications
Contact Information
