Opposition of Trademark

Any aggrieved party with valid grounds may oppose the registration of a trade mark so advertised in the Kenya Gazette. An opposition must be made within 60 days of the publication date, by filing a statement of opposition.

The process of opposition is sometimes rather involving and complex, much like the normal court proceedings, during which both parties may file evidence and counter-arguments, cross examine the evidence of the other parties and make representations at an oral hearing. At the end of the process the Registrar makes a ruling that is binding. Any dissatisfied party can file an appeal through the High court.

Section 21 of the Trademarks Act cap 506 Laws of Kenya

Advertisement of Trademark Registration

When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted:

Provided that the Registrar may cause an application to be advertised before acceptance if it is made under paragraph (e) of subsection (1) of section 12, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so

Opposition to Registration of a Trademark

Where an application has been so advertised the Registrar may advertise it again when it has been accepted but shall not be bound so to do.

1. Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Registrar of opposition to the registration.
2. The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
3. The Registrar shall send a copy of the notice to the applicant, and within the prescribed time after receipt thereof the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.
4. If the applicant sends a counter-statement, the Registrar shall furnish a copy thereof to the person giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.
5. The decision of the Registrar shall be subject to appeal to the court.
6. An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.
7. On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the court, bring forward further material for the consideration of the court.
8. On appeal no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated by the opponent, except by leave of the court; and, where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
9. On appeal the court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.
10. If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, or an appellant, neither resides nor carries on business in Kenya, the court or the Registrar may require him to give security for costs of the proceedings before the court or the Registrar relative to the opposition or to the appeal, as the case may be, and in default of such security being duly given may treat the opposition or application, or the appeal, as the case may be, as abandoned.

Rules 46-58 of the Trademarks Rules

Opposition to Registration

1. Any person may, within sixty days from the date of any advertisement in the Journal or Kenya Gazette of an application for registration of a trade mark, give notice in form TM 6 to the Registrar of opposition to the registration.
2. The notice shall include a statement of the grounds upon which the opponent objects to the registration. If the registration is opposed on the ground that the mark resembles marks already on the register, the notice shall set out- the numbers of those other marks; and references to the Journals or Kenya Gazettes in which those other marks were advertised. The notice shall be accompanied by a duplicate, which the Registrar shall forthwith send to the applicant.
3. Within forty-two days from the receipt of the duplicate the applicant shall send to the Registrar a counter-statement in form TM 7 setting out the grounds on which he relies as supporting his application. The applicant shall also set out what facts, if any, alleged in the notice of opposition he admits. The counter-statement shall be accompanied by a duplicate. Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent.
4. Within forty-two days after the receipt of the duplicate counterstatement, the opponent shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his opposition. The statutory declaration shall be in duplicate. Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.
5. Within forty-two days after the receipt of the statutory declaration of the opponent, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application. The statutory declaration shall be in duplicate. Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the opponent.
6. Within thirty days after the receipt of the statutory declaration of the applicant, the opponent may leave with the Registrar evidence, by way of statutory declaration, confined strictly to matters in reply. The statutory declaration shall be in duplicate. Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.
7. No further evidence shall be left on either side, but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.
8. If the applicant or opponent fails to furnish the required counterstatement or evidence in support within the times prescribed by rules 48 to 50, the application or opposition, as the case may be, shall be deemed to be abandoned and the Registrar may proceed to make an award of costs.
9. Where there are exhibits to declarations filed in an opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the originals shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

The Hearing

1. Upon completion of the evidence, the Registrar shall give notice to the parties of a date when he will hear the arguments in the case.
2. An appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice.
3. Within seven days from the receipt of the notice any party who intends to appear shall so notify the Registrar in form TM 8.
4. A party who receives notice and who does not, within seven days from the receipt thereof, so notify the Registrar in form TM 8, may be treated as not desiring to be heard and the Registrar may act accordingly.

NB:

• Where a party giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice neither resides nor carries on business in Kenya, the Registrar may require him to give security, in such form as the Registrar may deem sufficient, for the costs of the proceedings before the Registrar, for such amount as to the Registrar may seem fit, and at any stage in the opposition proceedings may require further security to be given at any time before his decision in the case.
• In the event of an opposition being uncontested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.

KIPI COMPLAINTS HANDLING PROCEDURE

The Kenya Industrial Property Institute (the Institute) was established in 2001 as a body corporate and mandated to administer and promote industrial property rights in Kenya.  The Institute implements two Acts of Parliament; The Industrial Property Act 2001 and the Trade Marks Act, Cap 506 of the laws of Kenya.

Public Complaints Desk

The Institute has established a Public Complaints Desk (the Desk) that handles all public complaints with regard to the mandate of the Institute.

The establishment of the Desk is also part of the Institute’s obligations under the Performance Contract with the Government of the Republic of Kenya. The Desk is located in a designated office which is equipped with a “level 9” telephone facility and an email address, complaints@kipi.go.ke.

Complaint-Handling Procedure

At the Institute, a complaint is defined as:

“Any expression of dissatisfaction by a customer or potential customer about service delivery by the members of staff of the Institute or about any policy of the Institute.”

The Institute is committed to consistent, fair and confidential complaint handling and to resolving complaints as quickly as possible.  The Institute aims at making it easy for the members of public to make a complaint if they are dissatisfied and the Institute shall treat all customers making a complaint equally.

The following is the procedure for handling complaints at the Institute:

1. A complaint may be received either by telephone, e-mail, a letter or in person.
2. Once a complaint is received, it shall be recorded by the Desk and accorded a case reference number to facilitate follow-up. A record of a complaint shall include the name and contact details of the customer, full details of the complaint including the date, as well as details of all communication with the customer and any actions to resolve the complaint.
3. The complaint shall then be directed to the appropriate Officer within the Institute depending on the subject matter of the complaint.
4. The Institute shall resolve all complaints within fifteen (15) days of receiving a complaint and written complaints shall be acknowledged promptly.
5. Where the complaint cannot be resolved immediately, customers shall be informed of the aforementioned timeframe at the time of making their complaint. Customers shall be informed of the progress of their complaint regularly, especially if there are any delays or changes to what has been agreed upon between the Desk and the customer.
6. Where appropriate, customers who have had a complaint resolved shall be contacted at a later date to find out whether or not they are happy with how their complaint was handled.
7. Where a complaint cannot be resolved by the foregoing complaint handling procedure, it shall be referred to the Managing Director and the customer shall be informed and given an amended timeframe for resolution.
8. The Desk shall report to Management on the complaints filed and their status on a monthly basis.

Handling Anonymous Complaints

The Institute will act on anonymous complaints as per Procedure (C) above after assessing the following:-

1. The seriousness of the matter reported;
2. The extent to which allegations are specific (e.g. it is clear what is being alleged, dates, times, locations, consequences of wrongdoing, names of witnesses);
3. The extent to which allegations are based on reliable information, not simply on hearsay;
4. Reasons to believe that there is justification for the matter being reported anonymously and not through channels that allow for easier scrutiny; and
5. Whether the language used is abusive or otherwise suggests a poison-pen letter.

Where the Institute has no way of contacting the person making the anonymous complaint, all of the necessary information for a decision to take further must be clearly available.

Anyone making an anonymous complaint should be aware that the Institute:-

1. May hand the complaint(s) over to the police or other authorities for their views or with a request to investigate the allegations further if deemed appropriate;
2. Will provide the person(s) accused or implicated in the alleged wrongdoing with copies of the allegation(s);
3. Will view VERY seriously any false, carelessly prepared or malicious allegations. Inaccurate, malicious or negligent accusations by an employee are considered a matter of gross misconduct;
4. Is obliged to support employee(s) named in anonymous allegations until such a time as there may be sufficient evidence to justify any action against them; and
5. Will dismiss as malicious any complaint that is found to have used a misleading sender name or address.