Trademark Registration: A Kenyan Guide

Do you have that mark, that word, that sign or brand that you identify with? Well, until you register it, it is not yours and you have no exclusive claim to it. Just like securing your interests in Land vide a Certificate of Title, securing a Certificate of Registration of a Trademark is the best way to secure and protect your brand’s identity.

A trademark is not mandatory, but it is highly advisable to register a trademark. The use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it. Any individual, company, law firm, partnership or cooperative society can register a Trademark as long as they meet the necessary requirements.

Trademarks in Kenya are regulated by the TradeMarks Act (Cap 506) Laws of Kenya. The institution charged with the mandate to register trademarks is the Kenya Industrial Property Institute (hereinafter "KIPI").

Examples of Trademarks include Jogoo which is owned by Unga Limited, Toyota owned by Toyota Company, CocaCola owned by the Coca-Cola company and Colgate owned by the Colgate-Palmolive Company. These marks have been registered by the respective companies and as such they have exclusive rights to those marks.

Registering your Trademark is the quickest and most cost-effective way to ensure legal exclusivity for the use of your name or logo etc. One of the most emotionally draining and expensive scenarios that can happen to anyone who owns a brand, is receiving a demand letter from a lawyer which requires you to stop using the name you thought you owned.

Introduction

A trademark is a form of intellectual property consisting of a distinctive symbol, design or expression that differentiates a good or service. The sign may consist of one or more distinctive words, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours etc.

Section 2 of the Trademarks Act Cap 506, Laws of Kenya defines a Trademark as mark used or proposed to be used:

• in relation to goods for the purpose of indicating connection in the course of trade between the goods and some person having the right either as proprietor or as licensee to use the mark, whether with or without any indication of the identity of that person or distinguishing goods in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person.
• in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person or distinguish services in relation to which the mark is used or proposed to be used from the same kind of services connected in the course of business with any other person.

A Trademark or Brand registration helps to protect one against intellectual property infringement. A registered trademark in Kenya is protected for a period of 10 years from the date of registration in Kenya. Six months prior to the expiry of the 10 years, the Registrar shall notify the Trademark owners in writing of the impending expiry date. The owner may thereafter apply for the renewal of the trademark subject to payment of the applicable fees which covers 10 additional years.

No legal action can be brought for infringement of an unregistered trademark. Under Common law however, unregistered trademarks are recognized under Section 5 of the Trademarks Act and may be enforced through a passing-off action. In a passing-off action, the owner of the unregistered mark must prove that he has trademark has acquired sufficient reputation through use by the public. Unregistered trademarks are also protected under Section 15A of the Trademarks Act upon sufficient proof of their reputation and well-known status in Kenya. Well-known trademarks generally require a great degree of use, that has resulted in a high degree of knowledge or recognition of the brand mark in the relevant sectors in Kenya.

What can be registered as a trademark?

The TradeMarks 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.”

The following may be registered as trademarks: logos, words, letters, numbers, drawings or pictures, monograms, signatures, names, device marks, labels, tickets, slogans, packaging, colors or combination of colors and Sound marks capable of being graphically represented. The sign may consist also of combinations of any of the said elements.

Kenya uses the Nice Classification for choosing the classes in which the mark has to be registered. It is possible to claim protection under different classes with a single trademark application. The Nice Agreement has classified Trademarks into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.

Why Register a Trademark?

Registering a Trademark has a number of benefits that include:

• Registration is prima-facie evidence of exclusive ownership of the Trademark and thus enables one to easily protect their rights should someone challenge them;
• Registration of a Trademark helps to keep off potential infringers from exploiting the goodwill of your Trademark;
• Registration helps one avoid trademark infringement and lengthy & costly legal suits. Using an unregistered Trademark can lead to a lengthy and expensive legal dispute over the rightful owner;
• Geographical Coverage. Registering your Trademark usually gives you nation-wide protection instead of rights that are restricted to the specific areas or regions in which you trade. Further, if you want to expand overseas, this gives you a good platform to obtain rights in other countries – even before you commence trading in those countries.
• Proprietors of Registered Trademarks can earn fees and royalties by licensing to third parties; and
• The law allows the owner of a registered Trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colorfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services.

The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. A proprietor of a registered Trademark enforces such exclusive rights to ownership of the trademark by possessing the right to institute civil action upon infringement of the Trademark.

Types of Trademarks

There are different types of Trademarks, and you can decide which one suits your business needs. These include:

??i.????Product Marks

These are those marks that relate to identification of specific goods

??ii.????Service Marks

A Service Mark is a sign which serves to distinguish services of an industrial or a commercial enterprise or a group of such enterprises. Services may be of any kind, such as financial, banking, travel, advertising, or catering, to name a few.

??iii.????Certification Marks

These marks are used to identify products that comply with a set of standards and have been certified by a certifying authority. A good example is the Kenya Bureau of Standards certification mark. Certification marks are owned by one person but licensed to others to identify good or services which meet the defined standard.

?iv.????Distinguishing guise

A distinguishing guise identifies the unique shape of a product or its package. An example of a trademarked distinguishing guise is the CocaCola bottle shape.

??v.????Well-known marks

These are marks that are considered to be well known in the market and as a result, benefit from stronger protection. Examples of well-known marks include Toyota, Mercedes Benz, Microsoft, YouTube, Facebook, Google, Sony, Unilever, Samsung, Yahoo, etc.

?Legal Framework on Trademarks in Kenya

Protection of Trademarks in Kenya can be done through National Registration by Direct Filing with the KIPI Office, International Registration through the Madrid System or under the Banjul Protocol on Trademarks for ARIPO Member Countries. KIPI acts as submitting agent for both of these systems of international registration.

Kenya’s main legal framework for the registration and renewal of trademarks is the Trade Marks Act Cap 506. It contains provisions relating to trademark registration and renewal applications, infringement actions, related costs and international trademark applications.

The International Treaties to which Kenya is a signatory include:

• Paris Convention for the Protection of Industrial Property;
• Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS);
• Madrid Agreement on International Registration of Trademarks;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• Trademark Law Treaty (TLT);
• 10th Edition of the NICE Classification of Goods & Services;
• Banjul Protocol for the Trademarks for ARIPO member countries; and
• The Nairobi Treaty on the Protection of the Olympic Symbol.

Registration of Trademarks

A.??Requirements for registration of a Trademark

Registration of your Trade Mark gives you exclusive right to that mark, it is evidence that the mark is yours and it affords you legal rights against others who may want to infringe your right to that mark. The process of trademark registration takes approximately 10-16 months from the date of filing up to certificate grant.

Any person claiming to be the proprietor of a trademark that it uses or proposes to use may apply to register the mark. Where an applicant appoints an agent to act on its behalf, the applicant must provide the agent with a power of attorney signed in the agent’s favour. This power of attorney need not be legalized.

In order for a trademark (other than a certification trademark) to be registrable, it must contain or consist of at least one of the following essential particulars: -

• the name of a company, individual or firm, represented in a special or particular manner;
• the signature or seal of the applicant or some predecessor in his business, and in the case of a company, a copy of the registration certificate;
• The nationality of the applicant as this determines the cost;
• Representation of the proposed trade mark;
• Contact information of the applicant including the Postal address, email address, Telephone number and physical address;
• an invented word or invented words; and
• any other distinctive mark, however, a name, signature or word or words, other than such as fall within the descriptions above, cannot be considered registrable except upon evidence of its distinctiveness.

?As noted from the requirements listed above, the key requirement is DISTINCTIVENESS.

B.??Procedure followed during Registration of Trademarks

The process of registration of trademarks undergoes the following stages:

1. Preliminary Search

During registration of a trademark, the applicant should conduct a search to establish whether the mark is registrable or not and whether the proposed registration adheres to the regulations of the Trademarks Act. The Search is not mandatory but is advisable to determine whether there is probability of registration.

2. Application for Registration

Once there is a confirmation that the mark is available for registration in a particular/various class(es), the next step would be to apply for registration of the mark.

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 applies for registration vide form TM 2 in the Act. This application is usually 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 in the Act 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 in the Act 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. However, one can apply for registration of a mark in different classes.

3. Examination

Once the Application for registration is received, it then proceeds for examination. The mark will undergo three types of examination which usually take an average of 5 months:

• Formality examination: this involves finding out whether the right documents are filed, whether the forms included are properly filled, and the required fees is appropriately paid. It is necessary that the class should be checked against the specification and confirm that the name, description and address of the Applicant is clearly written.
• Search: A Search is conducted to ascertain that there is no similar or closely resembling mark is on the register, otherwise the present application can be refused on that ground. If there exists a similar mark from the same applicant ordinarily an association is requested.
• Substantive examination: During substantive examination, the mark is examined as to its distinctiveness. Normally the applicant is requested to remove non distinctive matter and descriptive elements. Where removal of such matter may result in the loss of the identity or substantially affect the main features of the mark entry of disclaimer is normally requested. Letters, Numerals, geographical names, names of places, names of communities, general representation of human beings, words or figures common in the respective trade are normally disclaimed. Logos, emblems, flags and Marks of International Organizations are normally 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.

Once the examination is complete KIPI will then communicate to the applicant or the Agent of the approval or disapproval. In case of approval, the mark proceeds to advertisement. In case of disapproval, one may appeal against the decision or abandon the application.

4. Advertisement and Opposition

If the Registrar is satisfied that the Trademark is registrable after conducting substantive examination, the Trademark shall be advertised in the KIPI Journal, which is published monthly. Any interested party with valid grounds may proceed to raise an objection, by filing a statement of opposition, if they are opposed to registration of the Trademark.

If the application is opposed, the registration process is halted and opposition proceedings are commenced. If no objection is raised after 60 days from the date of advertisement, the Trademark shall be registered, and a Certificate of Registration issued to the applicant.

5. Registration

If there is no opposition to the trademark after the statutory 60 days period from the date of advertisement, or if an opposition has been decided in the applicant’s favor, the application will be registered, and the Institute will issue a Certificate of Registration and enter the registration. The date of the certificate of registration of a trademark is always duplicated to conform with the date the application was made.

Conclusion

Please note that once a trademark application goes through the examination stage, another entity cannot then lodge the same mark for registration. It shall be deemed to be unavailable for registration for any subsequent entities.

Worth also 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.

The recent increase in suits contesting brand names in the Kenyan market shows how important the protection of brand identity has become, to maintain an edge in an increasingly competitive business environment.

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Note: Should you need further assistance and clarification on the costs and documents related to the registration of a TradeMark in Kenya, do not hesitate to contact us on [email protected]