Trademarks are increasingly gaining significance in Kenya. In this note, we briefly look at what constitutes trademarks and how they can be protected.
The Trademark Act, Chapter 506 of the Laws of Kenya (“the Act”), regulates the registration, commercialization, and enforcement of trademarks in Kenya. The institution that handles trademark registration in Kenya is the Kenya Industrial Property Institute
(KIPI) through its trademark registry.
What are Trademarks?
A trademark is a sign capable of distinguishing the goods and/or services of a person or enterprise. The possible marks available for registration are:
- word marks;
- logos;
- slogans;
- composite marks – protect the combinations of word marks, logos, and slogans appearing together;
- service marks – distinguish the services of a person or enterprise from another;
- certification marks – identify goods or services that meet a defined standard; and
- distinguishing guises/get-ups – for distinctive shapes of products or packaging.
Registration Requirements
KIPI has separate registries for the registration of various distinctive intellectual property rights which includes the registry for Trademarks, Patents, industrial designs, etc.
Both natural and legal persons (such as companies, partnerships, etc) may seek to register a trademark provided such marks meet the registrability requirements which are:
- the mark must be distinctive and/or adapted to distinguish goods/services;
- the mark must not be descriptive of the product against which it is to be used;
- the applicant must specify the particular Nice Class[es] under which the mark is to be registered;
- the mark must not be offensive or one that is precluded from registration under the Act; and
- all requisite fees must be paid and all relevant forms filed.
In addition to the Act, trademarks are registered in accordance with the International Classification of Goods and Services as detailed and constituted under the Nice Agreement of 1957 which is a system of classifying goods and services for the purposes of registering trademarks. A total of forty-five (45) Classes are designated and one can register the mark under any of the classes or a combination of classes, as appropriate. As such, the relevant class (of goods or services) under which the mark shall be used must be identified for registration purposes.
Registration Process
When seeking to register a trademark, the following process applies:
- Applying for preliminary advice and official search [TM27] after which KIPI advises on the availability of the proposed trademark and its registrability including whether any disclaimers and/or clarifications are required. It is noteworthy that conducting an official search is not compulsory but is advisable to avoid unforeseen hiccups such as objections and unnecessary attendant costs.
- Upon receipt of the Official Search results from KIPI, an application for registration [substantive examination-TM2] made, accompanied by a power of attorney and/or appointment of agent forms [TM1] authorizing the agent to act on behalf of the proprietor of the trade mark.
- KIPI after that provides a report/findings on the substantive examination after which an application for advertisement in the KIPI Journal which runs for 60 calendar days is made.
- Upon lapse of the 60 days without any challenge or opposition being lodged, KIPI issues a certificate of trademark registration.
Oppositions/Objections Proceedings
Upon gazettement of the proposed mark on the KIPI Journal, an aggrieved party may lodge an opposition to the advertised mark. Such opposition must be backed by valid grounds. Any such valid opposition is a dispute that is addressed similarly to ordinary court proceedings. Both the applicant and the objector are afforded an opportunity to file their respective claims/responses/submissions with the Registrar of Trademarks for determination. A binding ruling is delivered thereafter. If any of the parties is dissatisfied with the Registrar’s decision, they can file an appeal at the High Court of Kenya and thereafter up the hierarchy of the Kenyan Courts as appropriate.
If the decision from the Opposition proceedings is in favour of the trademark applicant, the application will proceed for registration, and the certificate of trademark registration issues thereafter.
Registration Timeline
It takes approximately 3-6 months to complete the registration of a trademark in Kenya. Kindly note, however, that such timelines are subject to the exigencies that may arise at the KIPI offices.
Protection Period and Renewal
A trademark once registered is valid for a term of ten (10) years from the date of application. The validity period is renewable at the option of the registered proprietor. Within six (6) months before the expiry of the ten (10) year registration period, the Registrar is required to notify the proprietor of a registered mark of the imminent expiry to enable the proprietor’s further action on renewal if they so wish.
Where an application for renewal of a trademark is not made before the expiry of the trademark, the Registrar may remove the trademark from the register. There is, however, leeway to apply to the Registrar for reinstatement of the trademark time being of the essence.
For any enquiries on this or any other matter do not hesitate to contact us via email at info@olmllp.com.
Disclaimer: This article has been prepared for informational purposes only and is not legal advice. This information is not intended to create, and receipt of it does not constitute a lawyer-client relationship. Nothing in this article is intended to guarantee, warranty, or predict the outcome of a particular case and should not be construed as such a guarantee, warranty, or prediction. The authors are not responsible for any actions (or lack thereof) taken as a result of relying on or in any way using information contained in this article and in no event shall be liable for any damages resulting from reliance on or use of this information. Readers should take specific advice from a qualified professional when dealing with specific situations.
