Registered trade and service marks are increasingly becoming popular in Kenya as an effective tool to differentiate and protect brands. The operative law is the Trade Marks Act, Chapter 506 Laws of Kenya. The first registration period is 10 years which can be indefinitely renewed for further periods of 10 years after expiry of the first registration or of the last renewal. The Trade Marks Act describes a mark to include “a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.”
Why formally register a trademark? Trademarks distinguish goods (and services) from other similar products by capitalizing on the brand identity and its presence as a top-of-mind item among consumers in the market . The goodwill and reputation of the brand is protected as the unique property of the registered proprietor of the mark to the exclusion of all other persons generally. A registered trade mark also prevents confusion in the marketplace, helping consumers quickly identify the trademarked products or services. Further, possession of a Certificate of Registration is direct evidence of exclusive ownership in Kenya admissible in court, supporting legal action legal against potential or actual infringers. In a dispute, the burden of proof of ownership would be easily dispensed with by adducing the certificate as evidence. Finally, a registered mark is a valuable asset to its proprietor and can be bought, sold or otherwise appropriated to the owner’s benefit. Just think of the quantifiable cash value of a trademark such as M-PESA or Coca-Cola!
What Marks can be Registered? For a mark to be registrable in Kenya, it must contain or consist of at least one of the following essentials:
- Name of a company, individual or firm, represented in a special or particular manner;
- Signature of the applicant for registration or some predecessor in his business;
- An invented word or invented words;
- A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname; and/or
- Any other distinctive mark.
Modes of Registration. In Kenya, one can apply for national registration which protects the mark in Kenya only. This is done by way of application to the office of the Registrar of Trademarks housed at the Kenya Industrial Property Institute (KIPI). International Registration can also be applied for by submitting one application to KIPI to obtain trademark registration in multiple countries. This could be an application for registration within Africa through the African Regional Intellectual Property Organization (ARIPO) which administers registrations in African member states, or an international application through the World Intellectual Property Organization (WIPO) that administers the Madrid System of international trademark registration. KIPI acts as submitting agent for both of these systems of international registration, which will be considered critically in forthcoming blogs.
Process of Registration in Kenya. A trademark application is filed at KIPI either by the applicant in person or through an agent appointed by way of special power of attorney in standard form (Form TM1). First, an application for search and preliminary advise of the registrar as to distinctiveness and suitability of the mark for full registration should be made in standard form (Form TM27) accompanied by a clear representation of the mark as it should be registered. Upon receipt of a the registrar’s favorable advise, an application for full registration in standard form (Form TM2) along with at least 7 clear representations of the mark on A4 size paper should be filed. Both applications for search and preliminary advise and for full registrations should list clearly all the categories or classes of goods and/or services for which protection is sought out of the 45 classes under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks whose most recent iteration is the 11th Edition which came into force on January 1 2017. It is always best to seek legal advise on which of these classes to include for the most comprehensive protection of any mark before submitting an application for full registration. An application for full registration will go through the process of examination and, if approved, will be followed by a formal demand for fees for advertisement in the monthly Intellectual Property Journal issued by KIPI for a statutory period of 60 days from the date of publication of the advertisement within which any interested party can object to the full registration of the mark. A formal demand for registration fees usually accompanies the demand for advertisement fees. If there is no challenge to the full registration of the mark within the statutory period, the applicant is entered into the Register of Trade Marks as its registered proprietor and a Certificate of Registration is issued to them. The registered proprietor who might assign ownership to a third party (sell) must have this formally recorded in the Register of Marks by way of application in standard form (Form TM14) accompanied by a copy of the relevant executed Deed of Assignment.
Worth noting is that a registered trade mark will always have a registration number with which the status of its registration can be verified at the office of the Registrar of Trade Marks. The Strathmore University Center for Intellectual Property and Information Technology Law (CIPIT) also has a neat searchable database of registered trademarks in Kenya accessible here.
The author is a practising Advocate of the High Court of Kenya, Commissioner for Oaths and Registered Trademark and Patent Agent.
Contact Lehmann Associates for professional counsel, advice and execution of your trade/service mark registrations.
Image source: B Doyle and Associates Group