This is a form of intellectual property that protects exclusive use of a brand name, logo or made up words, for instance Google. A Trade Mark is a sign which serves to distinguish the goods of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours etc. The sign may consist also of combinations of any of the said elements. A Trade Mark can be a word, a symbol , a design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the market place.
The Trademarks Act (Cap 506) describes a mark as 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. Trademarks provide exclusivity to the use of your brand, which also protects the reputation of your brand.
A unique name, could be trademarked as a stage name. And that gives them full control of its use; if another artist or an establishment was to use this name, they would have to seek permission and pay for its use or compensate for the misuse of the name as penalty for trademark infringement. Trademarking is especially advisable for those in the fashion and entertainment industries.
REGISTRATION OF TRADEMARKS
Features of registerable trademarks
In order for a trade mark (other than a certification mark) to be registrable in Kenya, under the Trade Marks Act (Cap 506) it must contain or consist of at least one of the following essential particulars:-
- Distinctiveness – adapted, in relation to the goods in respect of which a trade mark proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration and in relation to services means to distinguish services with the provision of which the proprietor is or may be connected in the course of business, from services the provision of which he is not so connected.
- The name of a company , individual or firm , represented in a special or particular manner
- The 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.
- Any other distinctive mark.
- Should not be deceptive. A trade mark cannot be registered if it is likely to deceive or cause confusion or otherwise, or if it would be contrary to law or morality, or any scandalous design.
- Should not be identical or resembling trademarks.
- Well known trademarks should be protected. A national of a convention country; or one domiciled in, or has a real and effective industrial or commercial establishment in, a convention country, whether or not that person carries on business or has any goodwill in Kenya.
- Limitation as to colour, and of absence thereof. A trade mark may be limited in whole or in part to one or more specified colours, If a trade mark is registered without limitation of colour, it is deemed to be registered for all colours.
Why should a trademark be registered?
Registration of a trade mark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempted to ride on the goodwill of your mark. It enables you to more easily protect your rights more easily in case someone challenged them since the burden is on the challenger to prove any rights in a dispute.
The process of registration with its thorough checks for conflicting trade marks ensures that you have a unique mark that does not resemble any other parties mark and in so doing helps one avoid infringement of other parties’ rights. Also registration is not mandatory, using a mark for a certain length of time can establish your ownership through Common Law-but it is highly advisable to register a trade mark.
Registration is direct evidence of one’s ownership and enable you to more easily protect your rights, should someone challenge them. In a dispute, the burden is on the challenger of the registered trade mark to prove ownership. Use of an unregistered trade mark can lead to a lengthy, expensive legal dispute over who has the right to use it. A registered trade mark is also a valuable asset for business expansion especially so through licensing franchises.
Who can register a trademark?
- An individual
- a company
- a partnership
- a society
- a co-operative
- any lawful association having met the requirements of the Trade Marks Act.
The details required are the name of the Individual, Firm, Cooperative Society or Company seeking to register the Trade Mark; Nationality of the Applicant so as to determine the cost of Registration as it varies depending on whether the Applicant is a local or a foreigner; Postal Address, email, telephone number of the Applicant;
- Preliminary Search
Before applying for the registration of a trade mark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark which could be confused with the intended trade mark.
An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on Form TM 27. Search is not mandatory but is advisable for the following two reasons; It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in it’s present form.
It will also help one avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.
- Applying for registration
A person claiming to be the proprietor of a trade mark, used or proposed to be used by him, and who is desirous of registering it should apply to the Registrar on form TM 2 accompanied by seven (7)representations of the mark.
Foreign applicants are required to file through an agent and thus the application should be accompanied by the form of authorization Form TM 1 or the power of attorney duly completed and signed and must have a duty stamp affixed on it.
The application should also be accompanied by form TM 32 (for entry of the address of service in Kenya). The applicant is required to file a separate application for each mark in each different class.
- Examination Stage
At this stage the Registrar examines your application to ensure the correct documents have been filed and also your mark does not resemble any registered Trade mark. An examination report is then issued, the report will inform you whether your mark has been approved for registration or not. If it has been approved you will be required to pay the advertisement fee and registration fee. This stage is carried out by the KIPI officials and comprises of three (3) stages;
- Formality Examination
This entails close checking to for the purposes of determining whether the right documents have been filed, whether the forms included are properly filled, and the required fees is paid.
- Search by the Registrar
A search is conducted at the KIPI registry level to ascertain that there is no similar or closely resembling mark on the register, otherwise the present application can be refused on that ground. If there exists a similar mark from the same Applicant then an association is requested.
- Substantive Examination
At the substantive examination stage, the mark is examined to ensure its distinctiveness. The Applicant is usually requested to remove non distinctive matter and descriptive elements. However, where such may result in the loss of the identity or substantially affect the main features of the mark entry of disclaimer is normally requested. Such disclaimers include letters, numerals, geographical names, names of places, names of communities, general representation of human beings, words or figures common in the respective trade. On the other hand, logos, emblems, flags and marks of International Organizations are not registrable by anybody else except the respective Organizations or one authorized by them to do so. Generic names of products are also not registrable.
If the Registrar approves the mark for registration he will instruct you to pay an advertisement fee. The mark will then be advertised in the Kenya Industrial Property Institute (KIPI) journal for 60 days to allow any person opposed to the registration of your mark to raise their objection. If no opposition is raised, it proceeds to registration. If an opposition is raised however, a notice of opposition in the form of Form TM 6 is filed and opposition proceedings begin. Where no grounds are found to refuse a Trade Mark application after examination, the Trade Mark is advertised in the Industrial Property Journal to allow any interested party an opportunity to raise objections to the pending application prior to registration.
The information included in the journal include; the number and filing date, the representation of the mark, the class, the specification of the goods or services, the name and address of the applicant, any other claims (colour, claims, disclaimers).
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 sixty (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.
If there is no opposition to the Trade Mark after the statutory sixty (60) days period from the date of advertisement, or if an opposition has been decided in the applicants favour, the application will be registered and KIPI will issue a Certificate of Registration under Form 10a and enter the registration in the Trade Marks Register.
NB: In case of an opposition during the advertisement stage, opposition proceedings have to commence and be finalized to allow the decision on whether or not to issue the certificate. The mark is registered as of the date of the application for registration, and the date is deemed to be the date of registration:
TIMELINES FOR REGISTRATION- Summary
1. Collation of relevant documents, preparation and execution as appropriate; 1 day to 2 weeks depending on the speed of the Applicant to provide the relevant information.
2. Search; 2 to 7 days;
3. Application; 1 day or thereabouts;
4. Formality examination; 3 to 7 days;
5. Substantive examination and approval for advertisement;
6. Advertisement; 60 days
7. Registration and issuance of certificate of registration; approximate 1 week.
Period of Protection/ Ownership duration:
A Trade Mark registration is valid for ten (10) years from the date of application. Six (6) months prior to the expiry of the ten years, the registrar will notify the owner of the Trade Mark of the imminent expiry of the concerned Trade Mark.
The owner may then apply for a renewal which covers the next ten (10) years and the renewal can continue every ten (10) years thereafter upon payment of a renewal fee. Renewal of Trade or Service mark is done on
Form TM 10. If at the expiration of the time prescribed for renewing the mark, the conditions have not been duly complied with, the Registrar may remove the Trade Mark from the register.
From Ksh10, 000 upwards, depending on the trademark category.
Six months. The above approximate timelines amounts to one hundred and twenty (120) days.
LEGAL FRAMEWORK AND REGULATION
Kenya Industrial Property Institute is the regulatory body for trademarks in Kenya.
- Trademarks Act Cap 506
- Industrial Property Act 2001
- IP Regulations 2002
- Statute Law (Miscellaneous Amendments) Act no.11 of 2017
Advantage of registering trademarks
- Registration of a trade mark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempted to ride on the goodwill of your mark.
- It enables you to more easily protect your rights more easily in case someone challenged them since the burden is on the challenger to prove any rights in a dispute.
- The process of registration with its thorough checks for conflicting trade marks ensures that you have a unique mark that does not resemble any other parties mark and in so doing helps one avoid infringement of other parties’ rights. Registration is direct evidence of one’s ownership and enable you to more easily protect your rights, should someone challenge them.
- In a dispute, the burden is on the challenger of the registered trade mark to prove ownership. Use of an unregistered trade mark can lead to a lengthy, expensive legal dispute over who has the right to use it.
- A registered trade mark is also a valuable asset for business expansion especially so through licensing franchises
The forms required for Trademark registration
|Form of authorization of agent||Tm1|
|Application for Registration of a mark||Tm2|
|Notice of Opposition of Application||Tm6|
|Application for Renewal of mark||Tm10|
|Certificate of registration of trademark||Form 10a|
|Request to register Assignment or transmission||Tm14|
|Request to alter Trade or Business Address in the register||Tm17|
|Application to correct Clerical error in register or to ament document, etc.||Tm19|
|Application to change name or description in the register||Tm20|
|Application to surrender Trade Mark for all Goods and Services||Tm 21|
|Application to surrender Trade Mark for some Goods and Services||Tm22|
|Application to ender disclaimer or memorandum in Register||Tm23|
|Application to add to or alter registered Trade mark||Tm24|
|Application for the Marking ,Expunging or varying of an entry in the register||Tm25|
|Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register||Tm26|
|Application for search under rule 114/Application for preliminary advice as to distinctiveness.||TM 27|
|Request for certificate other than under section 22 of the act||Tm30|
|Application to enter or alter address for service||TM 32|
|Application for alteration of deposited regulations relating to certification of trademark||Tm34|
|Application to adapt Classification so that it is in accordance with section 6(2) of the act||Tm 43|
|Notice of opposition to application to have classification adapted Application for registration of registered user.||Tm44|
|Application for extension of Time||Tm53|
|Order form for copy of document||Tm54|
|Application to add goods or services to a Trade Mark or an Application||Tm55|
If a trade mark contains any part not separately registered by the proprietor as a trade mark; or contains matter common to the trade or to the provision of services of that description or otherwise of a non-distinctive character, the Registrar , may require, as a condition of its being on the register- the proprietor to disclaim any right to the exclusive use of any part of the trade mark or to the exclusive use of all or any portion of any such matter, or that the proprietor to make such other disclaimer as the registrar may consider necessary. A word which is a commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, cannot be registered as a trade mark in respect of a chemical substance or preparation.
To register a trademark in Kenya, please send us an email on email@example.com