Shem Otanga
Shem Otanga is a Partner in our Technology, Media & Telecommunications sector. Shem specialises in intellectual property and data protection.
About Shem
About Shem
Shem started his legal career as Trainee Lawyer at a leading international law firm in Kenya and was appointed as an Associate in 2010. He then joined another top tier regional corporate law 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
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Co-chair of the International Trademark Association's Global Advisory Council for Africa (AGAC) (2022-2023)
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International Trademark Association's Data Protection Committee
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International Association of Privacy Practitioners (IAPP)
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Law Society of Kenya
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Member, Famous and Well Known Marks Committee, International Trade Marks Association, (INTA), (January 2018 to – 2022).
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Council Member, Africa Global Advisory Council (GAC), International Trade Marks Association, (INTA), (February 2021 to – 2022).
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Member, IP & ICT Law Committee, Law Society of Kenya (LSK – Nairobi Chapter) (May 2017 to 2019).
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Member, IP & ICT Law Committee, Law Society of Kenya, Law Society of Kenya (LSK) (May 2012 – January 2014).
Languages
Languages
- English
- Swahili
About Shem
Shem started his legal career as Trainee Lawyer at a leading international law firm in Kenya and was appointed as an Associate in 2010. He then joined another top tier regional corporate law 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) (2022-2023)
-
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 – 2022).
-
Council Member, Africa Global Advisory Council (GAC), International Trade Marks Association, (INTA), (February 2021 to – 2022).
-
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).
Languages
- English
- Swahili
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
Market recognition
- Chambers Global 2024 - 2025 ranked Shem Otanga in Band 2 for intellectual property.
- Chambers Global 2021–2023 ranked Shem as “Up & Coming” intellectual property lawyer. From 2019–2021 he was ranked as “Lawyer to watch” for intellectual property.
- World Trademark Review 1000 2024 (Kenya) ranked Shem in the silver category.
- World Trademark Review 1000 2018–2020 (Kenya) ranked Shem as a recommended Individual.
- Managing IP's IP Stars (2024) ranked Shem as a Notable Practitioner.
Market recognition
- Chambers Global 2024 - 2025 ranked Shem Otanga in Band 2 for intellectual property.
- Chambers Global 2021–2023 ranked Shem as “Up & Coming” intellectual property lawyer. From 2019–2021 he was ranked as “Lawyer to watch” for intellectual property.
- World Trademark Review 1000 2024 (Kenya) ranked Shem in the silver category.
- World Trademark Review 1000 2018–2020 (Kenya) ranked Shem as a recommended Individual.
- Managing IP's IP Stars (2024) ranked Shem as a Notable Practitioner.
Expertise
Gambling & Regulatory Compliance
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