How to register Trade Marks in Kenya

By Paul Musyimi

 

Trade marks in Kenya are registered with the Kenya Industrial Property Institute (KIPI). KIPI is the registrar of trade marks in Kenya.

 

It is open to a person intending to register a trademark to do it himself or use a registered agent. However, foreign applicants, whether individuals or companies, can only register trade marks through registered agents.

 

The procedure for registering a trade mark is as follows.

 

1.                  Search

 

You contact 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.

 

2.                  Application for registration

 

Once the search is successful, an application is made to KIPI accompanied by seven (7) representations of the mark. The application should be accompanied by address of the applicant.

 

3.                  Examination

 

There are three stages in examination of a Trade Mark. First is the formal examination which occurs upon presentation of the application. This involves close checking to find out whether the right documents are filed, whether the forms included are properly filled, and the required fees is appropriately paid. Then a search may be done where one had not been carried out at the preliminary stage. Lastly, a substantive examination of the proposed mark is undertaken to determine whether the mark is distinctive enough for registration. Incidentally, a trade mark is a distinctive mark that identifies one business, product or services from another of its kind.

 

4.                  Advertisement

 

If the examiner finds no grounds to refuse a trade mark application, then the trade mark is advertised in the Industrial Property Journal or Kenya gazette to allow any interested party an opportunity to raise objections to the pending application prior to registration.

 

5.                  Opposition

 

Any aggrieved party with valid grounds may oppose the registration of a trade mark advertised in the Kenya Gazette. An opposition must be made within 60 days of the publication date by filing a statement of opposition. The Registrar makes a ruling on the fate of the process after hearing both parties. Any party dissatisfied with the ruling may file an appeal to the High Court of Kenya.

 

6.                  Registration

 

If there is no opposition to the trade mark after the statutory 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 the Institute will issue a Certificate of Registration and enter the registration in the Trade Marks Register.

 

7.                  Policing of Trade marks

 

It is upon the owner of the trade mark to monitor the market and to institute legal proceedings in case of infringement of a registered trademark. Infringement may involve using the mark without permission or using a deceptively similar trademark likely to cause confusion.

 

 

8.         Assignments

 

A trade mark is a form of property, although intangible, and usually entails considerable value acquired through goodwill. It can be sold, given or otherwise transferred to another party through a transaction referred to as an assignment. A Registered trade mark is assignable and transmissible either in connection with the goodwill of a business or not. This has to be done in conjunction with the trade marks office which only comes in to record and effect the changes of the transaction in its register.

 

9.        Licenses

A person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered or in respect of services with the provision of which he is connected in the course of business (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.

 

10.        Applicable Fees

The applicable fees for registration of trade marks may change from time to time and thus its best to consult KIPI for a quotation. The applicable fees listed below are merely meant to be a guide on the votes under which fees is payable. The current rates may be different. Also, different fees apply in the case of applications by foreign individuals and companies.

(a)                Search fees & preliminary advice………...Kshs, 2,000/=

(b)               Application Fee per Trade mark……….....Kshs, 3,000/=

(c)                Registration Fees (if accepted)…………....Kshs, 1.500/=

(d)               Advertisement Fees (Gazette)………….....Kshs, 3,000/= (Minimum)

(e)                Amendment of Application…………….....Kshs, 800/=

11.         Period of protection

A trade mark registration is valid for ten (10) years from the date of application and the registrar will notify the owner within six months of the imminent expiry of the concerned trademark. The owner is entitled to renew the trade mark every ten years.

12.        Registering Trade Marks Abroad

The foregoing procedure secures the trade mark in the Kenyan market only. In other words, it accords protection in Kenya only. If one is selling goods or offering services in other countries, he/she should consider registering the trademark in each of those countries.

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Paul Musyimi is a Freelance Legal Research Consultant based in Kenya. Lawyers may contact him for legal research solutions at pmusyimi@gmail.com