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How do you register a trademark, and what protections does it offer?

Introduction

Registering a trademark in Kenya is a crucial step for businesses and individuals who wish to protect their brand identity. A trademark can be a word, phrase, symbol, design, or a combination of these that identifies and distinguishes the source of the goods or services of one party from those of others. The process of registering a trademark in Kenya is governed by the Trade Marks Act (Cap 506) and the Trade Marks Rules. This document will provide a detailed guide on how to register a trademark in Kenya and the protections it offers.

Table of Contents

  1. Legal Framework

    • Trade Marks Act (Cap 506)

    • Trade Marks Rules

  2. Steps to Register a Trademark

    • Preliminary Search

    • Application Submission

    • Examination

    • Publication

    • Opposition

    • Registration and Issuance of Certificate

  3. Protections Offered by a Registered Trademark

    • Exclusive Rights

    • Legal Recourse

    • Deterrence

    • Asset Value

  4. Conclusion

1. Legal Framework

Trade Marks Act (Cap 506)

The Trade Marks Act (Cap 506) is the primary legislation governing the registration and protection of trademarks in Kenya. It outlines the procedures for application, examination, opposition, and registration of trademarks.

Trade Marks Rules

The Trade Marks Rules provide detailed procedural guidelines for the implementation of the Trade Marks Act. These rules cover the specifics of filing applications, fees, and other administrative processes.

2. Steps to Register a Trademark

Preliminary Search

  • Purpose: To ensure that the trademark you intend to register is not already in use or registered by another entity.

  • Procedure: Conduct a search at the Kenya Industrial Property Institute (KIPI) database. This can be done online or by visiting the KIPI offices.

  • Legal Reference: Trade Marks Act (Cap 506), Section 20.

Application Submission

  • Form: Fill out Form TM 2 (Application for Registration of a Trademark).

  • Details Required: Applicant's name and address, representation of the trademark, description of goods/services, and class of goods/services.

  • Fees: Pay the prescribed application fee.

  • Submission: Submit the completed form and fee to KIPI.

  • Legal Reference: Trade Marks Act (Cap 506), Section 21; Trade Marks Rules, Rule 8.

Examination

  • Formal Examination: KIPI will check if the application meets the formal requirements.

  • Substantive Examination: KIPI will examine the distinctiveness and registrability of the trademark.

  • Outcome: If the trademark passes both examinations, it proceeds to publication. If not, the applicant is notified of the objections.

  • Legal Reference: Trade Marks Act (Cap 506), Section 22.

Publication

  • Purpose: To allow third parties to oppose the registration of the trademark.

  • Procedure: The trademark is published in the Kenya Industrial Property Journal.

  • Duration: The opposition period lasts for 60 days from the date of publication.

  • Legal Reference: Trade Marks Act (Cap 506), Section 23.

Opposition

  • Grounds for Opposition: Any person can oppose the registration on various grounds, such as prior use or similarity to an existing trademark.

  • Procedure: File a notice of opposition using Form TM 6 and pay the prescribed fee.

  • Resolution: KIPI will hear both parties and make a decision.

  • Legal Reference: Trade Marks Act (Cap 506), Section 24; Trade Marks Rules, Rule 46.

Registration and Issuance of Certificate

  • Successful Registration: If there is no opposition or the opposition is resolved in favor of the applicant, the trademark is registered.

  • Certificate: KIPI issues a Certificate of Registration.

  • Validity: The trademark is valid for 10 years from the date of application and can be renewed indefinitely.

  • Legal Reference: Trade Marks Act (Cap 506), Section 25.

3. Protections Offered by a Registered Trademark

Exclusive Rights

  • Usage: The owner has the exclusive right to use the trademark in connection with the goods/services for which it is registered.

  • Legal Reference: Trade Marks Act (Cap 506), Section 7.

Legal Recourse

  • Infringement: The owner can take legal action against any unauthorized use of the trademark.

  • Remedies: Remedies include injunctions, damages, and account of profits.

  • Legal Reference: Trade Marks Act (Cap 506), Section 7A.

Deterrence

  • Public Notice: Registration serves as public notice of the owner's rights, deterring others from using similar marks.

  • Legal Reference: Trade Marks Act (Cap 506), Section 23.

Asset Value

  • Intangible Asset: A registered trademark is an intangible asset that can be sold, licensed, or used as security for loans.

  • Legal Reference: Trade Marks Act (Cap 506), Section 30.

Conclusion

Registering a trademark in Kenya involves several steps, including a preliminary search, application submission, examination, publication, opposition, and finally, registration and issuance of a certificate. The Trade Marks Act (Cap 506) and the Trade Marks Rules provide the legal framework for this process. Once registered, a trademark offers several protections, including exclusive rights, legal recourse, deterrence, and asset value. These protections are crucial for maintaining the integrity and value of a brand in the competitive market.

By following the outlined steps and understanding the legal protections, businesses and individuals can effectively safeguard their trademarks in Kenya.

Answered by mwakili.com