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

mwakili.com

Introduction

This response will provide a comprehensive guide on the process of registering a trademark in Kenya and the legal protections it offers. The information provided is based on the Trade Marks Act, 2016, and the Trade Marks Rules, 2017.

Trademark Registration Process 1.1 Eligibility Criteria 1.2 Application Process 1.3 Examination and Opposition 1.4 Registration and Publication
Protections Offered by a Registered Trademark 2.1 Exclusive Right to Use 2.2 Protection Against Infringement 2.3 Legal Remedies for Infringement
Conclusion

1. Trademark Registration Process

1.1 Eligibility Criteria

To be eligible for trademark registration in Kenya, a mark must meet the following criteria:

Distinctiveness: The mark must be capable of distinguishing the goods or services of one trader from those of others. This means it should not be too generic or descriptive. (Section 12(1) of the Trade Marks Act, 2016)
Not Deceptive: The mark should not be deceptive or likely to deceive the public as to the nature, quality, or geographical origin of the goods or services. (Section 12(2) of the Trade Marks Act, 2016)
Not Contrary to Public Policy: The mark should not be contrary to public policy or morality. (Section 12(3) of the Trade Marks Act, 2016)
Not Identical or Similar to Existing Marks: The mark should not be identical or similar to an existing registered trademark for similar goods or services. (Section 12(4) of the Trade Marks Act, 2016)

1.2 Application Process

The application for trademark registration is filed with the Kenya Industrial Property Institute (KIPI). The application must include:

Application Form: The application form must be completed and signed by the applicant or their authorized representative.
Mark Representation: A clear representation of the mark, including any colors or design elements.
Goods or Services: A list of the goods or services for which the mark is intended to be used.
Declaration of Use: A declaration that the mark is in use or intended to be used in Kenya.
Fees: The prescribed application fee must be paid.

1.3 Examination and Opposition

Once the application is filed, KIPI will examine it to ensure it meets the eligibility criteria. If the application is deemed acceptable, it will be published in the Kenya Industrial Property Journal. This publication allows third parties to oppose the registration of the mark within a specified period.

1.4 Registration and Publication

If no opposition is filed or the opposition is unsuccessful, the trademark will be registered and a certificate of registration will be issued. The registered trademark will be published in the Kenya Industrial Property Journal.

2. Protections Offered by a Registered Trademark

2.1 Exclusive Right to Use

A registered trademark grants the owner the exclusive right to use the mark in relation to the goods or services for which it is registered. This means that no other person can use the same or a similar mark for similar goods or services without the owner's permission. (Section 24 of the Trade Marks Act, 2016)

2.2 Protection Against Infringement

The owner of a registered trademark can take legal action against anyone who infringes their trademark rights. Trademark infringement occurs when someone uses a mark that is identical or similar to a registered trademark without the owner's permission. (Section 30 of the Trade Marks Act, 2016)

2.3 Legal Remedies for Infringement

The owner of a registered trademark can seek various legal remedies for infringement, including:

Injunction: An order from the court prohibiting the infringer from further using the infringing mark.
Damages: Compensation for any financial losses suffered by the owner due to the infringement.
Account of Profits: An order requiring the infringer to account for any profits made from the infringement.
Destruction of Infringing Goods: An order requiring the infringer to destroy any goods bearing the infringing mark.

3. Conclusion

Registering a trademark in Kenya provides valuable legal protection for businesses. It grants the owner the exclusive right to use the mark, protects against infringement, and provides legal remedies for infringement. By following the registration process and understanding the protections offered, businesses can safeguard their brand identity and reputation in the Kenyan market.