Contact

Shem Otanga

Partner

Shem Otanga is a Partner in our Technology, Media & Telecommunications sector. Shem specialises in Intellectual Property and data protection.

+254 724 531 856
shem.otanga@cdhlegal.comNairobi
Shem Otanga

About Shem

About Shem

Shem started his legal career as Trainee Lawyer at a firm in Kenya and was appointed as an Associate in 2010. He then joined another firm as Principal Associate in 2016 and was appointed as a Senior Associate in 2017. Shem also worked as a seconded lawyer at Mayer Brown International LLP(UK) and Brick Court  Chambers in 2018 (as part of the International Lawyers for Africa (ILFA) Flagship Program). In 2020 Shem joined Kieti Advocates LLP as a Partner.

Credentials

Credentials

Education

  • Advanced Certification in Patents, World Intellectual Property Organisation (WIPO) Academy, Geneva
  • Advanced Certification in Intellectual Property Law, WIPO Academy, Geneva
  • Postgraduate Diploma in Law, Kenya School of Law & Kenyan Bar Admission
  • LL.B, Bachelor of Laws (2nd Class Honours, Upper), University of Nairobi, Kenya

Memberships 

  • Co-chair of the International Trademark Association's Global Advisory Council for Africa (AGAC)
  • International Trademark Association's Data Protection Committee
  • International Association of Privacy Practitioners (IAPP)
  • Law Society of Kenya
  • 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).
  • Member, IP & ICT Law Committee, Law Society of Kenya (LSK – Nairobi Chapter) (May 2017 to 2019).
  • Member, IP & ICT Law Committee, Law Society of Kenya, Law Society of Kenya (LSK) (May 2012 – January 2014).

About Shem

Shem started his legal career as Trainee Lawyer at a firm in Kenya and was appointed as an Associate in 2010. He then joined another firm as Principal Associate in 2016 and was appointed as a Senior Associate in 2017. Shem also worked as a seconded lawyer at Mayer Brown International LLP(UK) and Brick Court  Chambers in 2018 (as part of the International Lawyers for Africa (ILFA) Flagship Program). In 2020 Shem joined Kieti Advocates LLP as a Partner.

Credentials

Education

  • Advanced Certification in Patents, World Intellectual Property Organisation (WIPO) Academy, Geneva
  • Advanced Certification in Intellectual Property Law, WIPO Academy, Geneva
  • Postgraduate Diploma in Law, Kenya School of Law & Kenyan Bar Admission
  • LL.B, Bachelor of Laws (2nd Class Honours, Upper), University of Nairobi, Kenya

Memberships 

  • Co-chair of the International Trademark Association's Global Advisory Council for Africa (AGAC)
  • International Trademark Association's Data Protection Committee
  • International Association of Privacy Practitioners (IAPP)
  • Law Society of Kenya
  • 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).
  • Member, IP & ICT Law Committee, Law Society of Kenya (LSK – Nairobi Chapter) (May 2017 to 2019).
  • Member, IP & ICT Law Committee, Law Society of Kenya, Law Society of Kenya (LSK) (May 2012 – January 2014).

Experience

Kenyan listed bank

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.

Video on demand service provider

Advising  a South African online subscription video on demand service provider on its regulatory and copyright related royalty fee obligations in Kenya.

Data protection

Advising a leading international parcel delivery service provider on data protection in relation to collection and use of its customers’ personal data in Kenya.

International fertiliser manufacturer

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.

Tech start-up

Advising the tech start-up arm of a Kenyan listed marketing and communication company in relation to the drafting and review of its privacy policies for use in Kenya, Tanzania, South Africa, Uganda, Zambia and Ghana.

Non-Contentious IP 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.

Non-Contentious IP experience

Advising a leading Kenyan bank with regional presence on its rebranding process and filing and prosecuting the registration of its new trademark 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.

Non-Contentious IP experience

Advising a pan African bank on its rebranding process including filing and prosecuting the registration of its trademarks 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.

Non-Contentious IP experience

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.

Contentious IP 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.

Contentious IP experience

Representing a leading international motor vehicle manufacturer in 3D trade mark opposition proceedings against an international SUV manufacturer.

Contentious IP experience

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.

Contentious Intellectual Property experience

Acting as assisting counsel in successful trademark opposition proceedings filed on behalf of a Dubai based soft drinks manufacturer against Trademark Application Numbers 62286, 62287 and 67859 (Words And Device) in Class 32 (2010 - 2012).

Contentious IP experience

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.

Contentious IP experience

Successfully representing a Kenyan paper bag manufacturing company on the recovery of its domains names from a cybersquatter.

News

Developments and changes in the Kenyan tax landscape: Tax outlook for 2023
Tax & Exchange Control

Developments and changes in the Kenyan tax landscape: Tax outlook for 2023
Renewed efforts by the taxman to collect rental income tax
Tax & Exchange Control

Renewed efforts by the taxman to collect rental income tax

The Kenya Revenue Authority (KRA) will soon be knocking on your tenant’s door to find out how much the tenant pays as rent and who is the owner of the property. On 18 October 2022,...
Cracking the whip: The supervisory power of the Office of the Data Protection Commissioner in Kenya
Technology, Media & Telecommunications

Cracking the whip: The supervisory power of the Office of the Data Protection Commissioner in Kenya

On 5 October 2022, the Office of the Data Protection Commissioner (ODPC) issued a press release stating that it would be conducting a preliminary documentary assessment and audit on...
Extension of implementation date for recordation of intellectual property rights
Technology, Media & Telecommunications

Extension of implementation date for recordation of intellectual property rights

Kenya established the legal framework for the recordation of trademarks and other intellectual property rights (IPRs) through the amendment of the Anti-Counterfeit Act (Act) in 2019,...
Webinar Recording | Enemy at the Gates: The practicalities and difficulties of data breaches
Technology, Media & Telecommunications

Webinar Recording | Enemy at the Gates: The practicalities and difficulties of data breaches

CDH hosted a webinar on the latest developments, practicalities, and insights derived from the coal face of data breach incidents.

Trademarks and rebranding
Technology, Media & Telecommunications

Trademarks and rebranding

Trademarks represent a form of intellectual property that is rooted in the heart of every business. It provides businesses with a unique identity for the brand, its products and/or...
Re-thinking industrialization in Kenya and the East Africa Community. What does the future hold?
Industrials, Manufacturing & Trade

Re-thinking industrialization in Kenya and the East Africa Community. What does the future hold?

CDH in partnership with the French Chamber of Commerce Kenya hosted an informal breakfast event to discuss matters that affect the future of business in an everchanging market.
CDH’s Industrials, Manufacturing & Trade Sector
Industrials, Manufacturing & Trade

CDH’s Industrials, Manufacturing & Trade Sector

CDH’s Industrials, Manufacturing & Trade Sector is strategically positioned to provide clients with support to navigate international, regional, and domestic policy, domestic regulatory...
LGC Pulse with Kieti Law LLP

LGC Pulse with Kieti Law LLP

LGC Pulse with Kieti Law LLP
Kenya’s Data Protection Act, 2019
Technology, Media & Telecommunications

Kenya’s Data Protection Act, 2019

Partner Shem Otanga discusses Kenya’s Data Protection Act, 2019.

Njeri Wagacha provides a summary of the year's recordings
Corporate & Commercial Law

Njeri Wagacha provides a summary of the year's recordings

Every month CDH Kenya Partner Njeri Wagacha publishes a podcast 'Njeri Talks Law'. In this final podcast for 2022, Njeri extends her gratitude to her listeners for accompanying her...
Renewed efforts by the taxman to collect rental income tax
Tax & Exchange Control

Renewed efforts by the taxman to collect rental income tax

On 18 October 2022, the Kenya Revenue Authority (KRA) issued a notice to the public of its intent to undertake a data collection exercise on rental properties within Nairobi City County...
Njeri Wagacha talks to Shem Otanga
Corporate & Commercial Law

Njeri Wagacha talks to Shem Otanga

On this month's podcast, Njeri talks to fellow Partner Shem Otanga on the Data Protection Registration Regulations, the requirements for registration in Kenya, what it means to be...
NjeriTalksLaw - Episode 1 | Formation and Beyond

NjeriTalksLaw - Episode 1 | Formation and Beyond

In this episode, Njeri talks to Partners, Sammy Ndolo and Shem Otanga, about starting and growing a law firm.

Recognition

2022-2023

Chambers Global

Chambers Global 2022-2023 ranked Shem as "Up & Coming" for Intellectual Property. From 2019-2021 he was ranked as "Lawyer to watch" for Intellectual Property.

2018-2020

World Trademark Review

World Trademark Review 1000 2018-2020 (Kenya) ranked Shem as a recommended Individual.

Chambers Global

Chambers Global 2022-2023 ranked Shem as "Up & Coming" for Intellectual Property. From 2019-2021 he was ranked as "Lawyer to watch" for Intellectual Property.

World Trademark Review

World Trademark Review 1000 2018-2020 (Kenya) ranked Shem as a recommended Individual.

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