Registration of Trademarksin Kenya

Trademarks areincreasingly gaining significance in Kenya. In this note, we briefly look at whatconstitutes trademarks and how they can be protected.

The Trademark Act, Chapter506 of the Laws of Kenya (“the Act”), regulates the registration, commercialization,and enforcement of trademarks in Kenya. The institution that handles trademarkregistration in Kenya is the Kenya Industrial Property Institute
(KIPI) through its trademark registry.

What are Trademarks?

A trademark is asign capable of distinguishing the goods and/or services of a person orenterprise. The possible marks available for registration are:

a.     word marks;

b.    logos;

c.     slogans;

d.    composite marks – protect thecombinations of word marks, logos, and slogans appearing together;

e.     service marks – distinguish theservices of a person or enterprise from another;

f.      certification marks - identify goodsor services that meet a defined standard; and

g.    distinguishing guises/get-ups – fordistinctive shapes of products or packaging.

Registration Requirements

KIPI has separate registriesfor the registration of various distinctive intellectual property rights whichincludes the registry for Trademarks, Patents, industrial designs, etc.

Both natural and legalpersons (such as companies, partnerships, etc) may seek to register a trademarkprovided such marks meet the registrability requirements which are:

a.     the mark must be distinctive and/oradapted to distinguish goods/services;

b.    the mark must not be descriptive ofthe product against which it is to be used;

c.     the applicant must specify theparticular Nice Class[es] under which the mark is to be registered;

d.    the mark must not be offensive or onethat is precluded from registration under the Act; and

e.     all requisite fees must be paid andall relevant forms filed.

In addition to the Act, trademarksare registered in accordance with the International Classification of Goods andServices as detailed and constituted under the Nice Agreement of 1957 which isa 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 markunder any of the classes or a combination of classes, as appropriate. As such, therelevant class (of goods or services) under which the mark shall be used mustbe identified for registration purposes.

Registration Process

When seeking to register atrademark, the following process applies:

a.     Applying for preliminary advice andofficial search [TM27] after which KIPI advises on the availability of theproposed trademark and its registrability including whether any disclaimersand/or clarifications are required. It is noteworthy that conducting anofficial search is not compulsory but is advisable to avoid unforeseen hiccupssuch as objections and unnecessary attendant costs.

b.    Upon receipt of the Official Searchresults from KIPI, an application for registration [substantiveexamination-TM2] made, accompanied by a power of attorney and/or appointment ofagent forms [TM1] authorizing the agent to act on behalf of the proprietor ofthe trade mark.

c.     KIPI after that provides areport/findings on the substantive examination after which an application foradvertisement in the KIPI Journal which runs for 60 calendar days is made.

d.    Upon lapse of the 60 days without anychallenge or opposition being lodged, KIPI issues a certificate of trademarkregistration.

Oppositions/ObjectionsProceedings

Upon gazettement of theproposed mark on the KIPI Journal, an aggrieved party may lodge an oppositionto the advertised mark. Such opposition must be backed by valid grounds. Anysuch valid opposition is a dispute that is addressed similarly to ordinarycourt proceedings. Both the applicant and the objector are afforded anopportunity to file their respective claims/responses/submissions with theRegistrar of Trademarks for determination. A binding ruling is deliveredthereafter. If any of the parties is dissatisfied with the Registrar’sdecision, they can file an appeal at the High Court of Kenya and thereafter upthe hierarchy of the Kenyan Courts as appropriate.

If the decision from theOpposition proceedings is in favour of the trademark applicant, the applicationwill proceed for registration, and the certificate of trademark registrationissues thereafter.

Registration Timeline

It takes approximately 3-6months to complete the registration of a trademark in Kenya. Kindly note,however, that such timelines are subject to the exigencies that may arise atthe KIPI offices.

Protection Period andRenewal

A trademark once registeredis valid for a term of ten (10) years from the date of application. Thevalidity period is renewable at the option of the registered proprietor. Withinsix (6) months before the expiry of the ten (10) year registration period, theRegistrar is required to notify the proprietor of a registered mark of theimminent expiry to enable the proprietor’s further action on renewal if they sowish.

Where an application forrenewal of a trademark is not made before the expiry of the trademark, theRegistrar may remove the trademark from the register.  There is, however, leeway to apply to theRegistrar for reinstatement of the trademark time being of the essence.

For any enquiries on thisor any other matter do not hesitate to contact us via email at info@olmllp.com.

Disclaimer: Thisarticle has been prepared for informational purposes only and is not legaladvice. This information is not intended to create, and receipt of it does notconstitute a lawyer-client relationship. Nothing in this article is intended toguarantee, warranty, or predict the outcome of a particular case and should notbe construed as such a guarantee, warranty, or prediction. The authors are notresponsible for any actions (or lack thereof) taken as a result of relying onor in any way using information contained in this article and in no event shallbe liable for any damages resulting from reliance on or use of thisinformation. Readers should take specific advice from a qualified professionalwhen dealing with specific situations.