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

mwakili.com

Introduction

Registering a trademark in Kenya is a crucial step for businesses and individuals seeking to protect their brand identity. A trademark can be a word, phrase, symbol, or design that distinguishes the goods or services of one entity from those of others. The process of trademark registration in Kenya is governed by the Trade Marks Act Cap 506. This guide will provide a detailed overview of the registration process and the protections offered by a registered trademark.

Overview of Trademark Registration
Steps to Register a Trademark in Kenya
1. Preliminary Search
2. Application Submission
3. Examination
4. Publication
5. Registration and Issuance of Certificate
Protections Offered by a Registered Trademark
1. Exclusive Rights
2. Legal Recourse
3. Deterrence of Infringement
4. Asset Value
Conclusion

1. Overview of Trademark Registration

Trademark registration in Kenya is primarily governed by the Trade Marks Act Cap 506. The Act outlines the procedures, requirements, and protections associated with trademark registration. The Kenya Industrial Property Institute (KIPI) is the body responsible for the registration and administration of trademarks in Kenya.

2. Steps to Register a Trademark in Kenya

2.1 Preliminary Search

Before filing a trademark application, it is advisable to conduct a preliminary search to ensure that the trademark you intend to register is not already in use or registered by another entity. This search can be conducted through the KIPI database or by engaging the services of a trademark attorney.

Source: Kenya Trademark Search ↗

2.2 Application Submission

Once the preliminary search confirms that the trademark is available, the next step is to submit a trademark application to KIPI. The application must include:

A completed application form (Form TM 2)
A clear representation of the trademark
A list of goods or services to be covered by the trademark
Payment of the prescribed fees

Source: Trademark Registration in Kenya | Easy Steps in 2023 ↗

2.3 Examination

After submission, KIPI will examine the application to ensure it complies with the requirements of the Trade Marks Act. The examination process includes checking for any absolute or relative grounds for refusal. Absolute grounds include lack of distinctiveness or descriptiveness, while relative grounds involve conflicts with existing trademarks.

Source: Trademark Registration Kenya - Liesegang ↗

2.4 Publication

If the application passes the examination, the trademark is published in the Kenya Industrial Property Journal. This publication allows third parties to oppose the registration of the trademark within 60 days from the date of publication. If no opposition is filed, or if any opposition is resolved in favor of the applicant, the trademark proceeds to registration.

Source: Trademark And Other Intellectual Property Rights Protection Kenya ↗

2.5 Registration and Issuance of Certificate

Upon successful completion of the publication period without opposition, or after resolving any opposition, KIPI will register the trademark and issue a certificate of registration. The trademark is then protected for an initial period of 10 years from the date of application, and it can be renewed indefinitely for further consecutive periods of 10 years.

Source: Trademark registration in Kenya. | Register your Trademark. ↗

3. Protections Offered by a Registered Trademark

3.1 Exclusive Rights

A registered trademark grants the owner exclusive rights to use the trademark in connection with the goods or services for which it is registered. This exclusivity helps prevent others from using a similar mark that could cause confusion among consumers.

Source: A Kenyan Guide to Trademark Registration ↗

3.2 Legal Recourse

Trademark registration provides the owner with the legal basis to take action against any unauthorized use of the trademark. This includes the ability to file lawsuits for trademark infringement and seek remedies such as injunctions, damages, and account of profits.

Source: Trademark And Other Intellectual Property Rights Protection Kenya ↗

3.3 Deterrence of Infringement

The public record of a registered trademark serves as a deterrent to potential infringers. Knowing that a trademark is registered and protected by law can discourage others from attempting to use a similar mark.

Source: trademarks guide ↗

3.4 Asset Value

A registered trademark is an intangible asset that can add significant value to a business. It can be licensed, franchised, or sold, providing additional revenue streams for the trademark owner.

Source: Trademark registration in Kenya (KE) ↗

Conclusion

Registering a trademark in Kenya is a vital step for protecting your brand and ensuring that your goods or services are distinguishable in the marketplace. The process involves several steps, including a preliminary search, application submission, examination, publication, and registration. Once registered, a trademark offers numerous protections, including exclusive rights, legal recourse, deterrence of infringement, and asset value. By understanding and following the registration process, businesses and individuals can safeguard their intellectual property and enhance their market presence.

Sources: