This guide explains each route, the forum, and the remedies, so a brand owner knows how to protect the value in its name.
Who this guide is for
This guide is for brand owners, businesses and their advisers facing a trademark conflict, whether someone has applied for a confusingly similar mark, is selling infringing goods, or is sitting on a registration they do not use. If you are registering rather than defending, see our guide to trademark registration in Kenya. For counterfeits and border enforcement, see our guide to IP enforcement and anti-counterfeit in Kenya.
Background: why disputes matter
A trademark is a business asset, often the most valuable one a consumer-facing company owns. Its value depends on the owner controlling who uses it. The Trade Marks Act (Cap 506), administered by the Registrar at KIPI, gives the owner tools to do that, but they only work if used in time. The three most common disputes are opposition, infringement and removal, and each has its own route and clock.
Opposition: stopping a mark before it registers
When KIPI accepts a trademark application, it advertises the mark in the Industrial Property Journal. From that advertisement, any interested person has 60 days to file an opposition with the Registrar. Opposition is the cheapest way to keep a conflicting mark off the register, because it stops the problem before the applicant gains a registration to rely on.
Common grounds are that the mark is confusingly similar to an earlier mark, that it is descriptive or non-distinctive, or that the applicant is not entitled to it. The opposition runs like a paper trial before the Registrar, with a notice of opposition, a counterstatement, evidence by affidavit, and a hearing. In our view, watching the Journal and opposing early is far cheaper than litigating an infringement once the competitor is established.
Infringement of a registered mark
Registration is what gives you the strongest remedy. The owner of a registered trademark can sue for infringement where another trader uses an identical or confusingly similar mark on the same or similar goods or services without consent. The action is brought in the High Court, and the remedies include an injunction to stop the use, damages or an account of the infringer’s profits, and delivery up or destruction of the infringing goods.
The strength of the registered right is that you do not have to prove a reputation from scratch; the registration is your title. That is the practical reason to register early, and to keep the registration current, rather than relying on your reputation alone.
Passing off: protecting an unregistered mark
If your mark is not registered, you are not without a remedy, but you have a harder job. The common-law action of passing off protects the goodwill in an unregistered mark. To succeed you must prove three things: that you have goodwill or reputation in the mark, that the other trader has made a misrepresentation likely to deceive the public, and that you have suffered or are likely to suffer damage. Passing off is available, but it is evidence-heavy and uncertain compared with suing on a registration, which is the best argument for registering in the first place.
| Route | Right relied on | Forum | Typical remedy |
|---|---|---|---|
| Opposition | Earlier mark / non-registrability | Registrar (KIPI) | Application refused |
| Infringement | Registered mark | High Court | Injunction, damages or account, delivery up |
| Passing off | Goodwill in an unregistered mark | High Court | Injunction, damages |
| Rectification / removal | Register is wrong or mark unused | Registrar / High Court | Mark removed or amended |
Removing a mark from the register
Sometimes the problem is a registration that should not stand, for example a mark registered in bad faith, or one that has not been used. The Trade Marks Act allows a person to apply to rectify the register, and a registered mark can be removed for non-use where it has not been used for a continuous period, subject to the conditions in the Act. Removal is a powerful tool where a dormant registration blocks your own application, but the grounds and periods are technical and should be checked against the Act before you rely on them.
Common questions
How long do I have to oppose a mark? 60 days from the advertisement of the mark in the Industrial Property Journal.
Do I have to register to sue? No, but registration gives you the far stronger infringement action. Without it you are limited to passing off, which is harder to prove.
Where are infringement cases heard? In the High Court, which can grant injunctions, damages or an account of profits, and delivery up.
Can I remove a competitor’s unused mark? Potentially, through rectification for non-use, subject to the statutory conditions.
What is passing off? A common-law claim protecting the goodwill in an unregistered mark, requiring proof of goodwill, misrepresentation and damage.
Common pitfalls
The recurring mistakes are missing the 60-day opposition window and then having to litigate a registered competitor; relying on an unregistered mark and discovering that passing off is far harder to prove than infringement; and letting a registration lapse or go unused so that it becomes vulnerable to removal. Others delay enforcement so long that an infringer builds its own reputation, which weakens the case and the remedy.
What you should do now
- First, put a watch on the Industrial Property Journal so you can oppose conflicting marks within the 60 days.
- Next, register your core marks, and keep the registrations current and in use.
- In addition, act early on infringement, because delay weakens both the case and the remedy.
- Meanwhile, if a dormant mark blocks you, consider rectification for non-use.
- Finally, take advice before the deadline, because opposition and non-use periods are strict.
How OLM Law can help
Our intellectual property team handles the full range of trademark disputes: filing and defending oppositions before the Registrar, suing and defending infringement and passing-off actions in the High Court, and bringing or resisting rectification proceedings. We also run Journal watches so clients can oppose conflicting marks in time. To protect or defend a mark, contact John Maina or Kenneth Likoko, Partners, at OLM Law Advocates LLP. See also our guides on international trademark protection, protecting intellectual property in Kenya, and common IP questions.
This article is a general guide only and is not legal advice. Please seek advice on your specific circumstances.
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