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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. The process is governed by the Trade Marks Act (Cap 506) and the Trade Marks Rules. This comprehensive guide will walk you through the steps required to register a trademark in Kenya and outline 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, requirements, and legal implications of trademark registration.

Trade Marks Rules

The Trade Marks Rules provide detailed guidelines on the procedural aspects of trademark registration, including the forms to be used, fees payable, and timelines for various stages of the registration process.

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.

  • Source: 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, and the goods/services for which the trademark is to be used.

  • Fee: Pay the prescribed application fee.

  • Source: Trade Marks Rules, Rule 8.

Examination

  • Formal Examination: KIPI examines the application to ensure it complies with formal requirements.

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

  • Outcome: The application may be accepted, accepted with conditions, or rejected.

  • Source: Trade Marks Act (Cap 506), Section 21.

Publication

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

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

  • Opposition Period: 60 days from the date of publication.

  • Source: Trade Marks Act (Cap 506), Section 21.

Opposition

  • Grounds for Opposition: Likelihood of confusion, prior rights, non-distinctiveness, etc.

  • Procedure: File a notice of opposition using Form TM 6.

  • Outcome: If opposition is successful, the application is rejected. If not, it proceeds to registration.

  • Source: Trade Marks Act (Cap 506), Section 21.

Registration and Issuance of Certificate

  • Certificate: If no opposition is filed or if opposition is unsuccessful, KIPI issues a certificate of registration.

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

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

3. Protections Offered by a Registered Trademark

Exclusive Rights

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

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

Legal Recourse

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

  • Remedies: Injunctions, damages, and account of profits.

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

Deterrence

  • Public Notice: Registration serves as public notice of the owner's rights, deterring potential infringers.

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

Asset Value

  • Valuation: A registered trademark can be valued as an intangible asset.

  • Commercial Use: It can be licensed or sold, providing additional revenue streams.

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

Conclusion

Registering a trademark in Kenya involves a series of steps, from conducting a preliminary search to the issuance of a registration certificate. The protections offered by a registered trademark are substantial, including exclusive rights, legal recourse, deterrence, and asset value. By following the guidelines set out in the Trade Marks Act (Cap 506) and the Trade Marks Rules, businesses and individuals can safeguard their brand identity and enhance their market position.

Answered by mwakili.com