Trademark registration in Kenya is processed at the Kenya Industrial Property Institute. Registration of a trade mark is direct evidence of exclusive ownership in and it helps keep off potential infringers who might be tempted to ride on the goodwill of a person or entity’s mark.
A Trade Mark is a sign which may consist of a word, a symbol , design, distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colors or combinations of any of the said elements, that serves to distinguish the goods of an industrial or a commercial enterprise or a group of such enterprises in a market place.
TRADEMARK REGISTRATION IN KENYA
The process of registration with the institute entails thorough checks for conflicting trademarks. This ensures that one has a unique mark that does not resemble any other parties mark and in so doing helps one to avoid infringement of other party’s rights. Although, registration is not mandatory, using a mark for a certain length of time can establish one’s ownership through Common Law, however it is highly advisable to register a trade mark.
TRADEMARK REGISTRATION FORMS
The forms of types of registrable marks in Kenya are as follows
- Service Mark
A Service Mark is a sign which serves to distinguish services of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of either of the characteristics named above in trade marks.
- Certification Mark
A certification mark helps to identify goods or services which meet a defined standard. Certification marks are owned by one person but licensed to others to identify good or services which meet the defined standard. Examples are the wool mark used on clothing that are 100% pure wool, or the Kenya Bureau of Standards certification mark.
- Distinguishing Guise
A distinguishing guise identifies the unique shape of a product or its package. If for example you manufactured a biscuit shaped into a fish, it might be important to register the fish shape as a trademark as a distinguishing guise.
HOW DO I REGISTER MY TRADEMARK IN KENYA
In order for a trade mark (other than a certification mark) to be registrable in Kenya, 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 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.
In addition, a trademark registration in Kenya can obtained if it belongs to a different proprietor and already on the register in respect of the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a description of services.
A trade mark may be limited in whole or in part to one or more specified colors, if a trade mark is registered without limitation of color, it is deemed to be registered for all colors.
WHO CAN REGISTER A TRADEMARK?
An individual, a company, a partnership, a society, a co-operative or any lawful association can apply for a trade mark provided they meet the necessary requirements.
Protection of well-known trade marks
A trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trade mark, is a mark which is well known in Kenya as being the mark of a person who-
- is a national of a convention country; or
- is 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.
The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trade mark, is entitled to restrain by injunction, the use in Kenya of a trade mark which is identical or the essential part of which is identical or similar to his, in relation to identical or similar goods or services, where the use is likely to cause confusion among the users of the goods or services.
A trade mark cannot be registered if that trade mark, or an essential part thereof, is likely to impair, interfere with or take unfair advantage of the distinctive character of the well-known trade mark.
TRADEMARK REGISTRATION PROCEDURE IN KENYA
Below is a breakdown of the process for registering a trademark in Kenya:
Trademark search in Kenya
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 to the prospecting owner or his agent on the specified form.
2. Application for trademark registration in Kenya
The proposed owner of the trademark, his agent or anyone who is making the application should apply to the Registrar on the specified form accompanying 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 acceptable form of authorization or the power of attorney duly completed and signed with a duty stamp affixed on it.
The application should also be accompanied by the form 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.
Validity Period OF TRADEMARK REGISTRATION IN KENYA
A trade mark registration is valid for ten (10) years from the date of application. Six months prior to the expiry of the ten (10) years, the Registrar will notify the owner of the trade mark of imminent expiry of the concerned trademark. Where the owner applies for a renewal, if granted it covers the next ten (0) years and the renewal can continue every ten (10) years. Failure to apply for renewal of the expired trademark by the owner may warrant that the mark be removed from the register of trademarks.
COST OF TRADEMARK REGISTRATION IN KENYA
The cost for registering a trademark in Kenya depends on the residence or location of business of the applicant. A foreign fee is payable if the person paying the fee or on whose behalf the fee is being paid does not reside in Kenya and does not have a principal place of business in Kenya.
|Local fees (N)||Foreign fee (USD $)|
|For the first class||4,000||200|
|For each subsequent class||3,000||150|