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trademark registration in kenya

Introduction

Trademark registration in Kenya is governed by the Trade Marks Act (Cap 506) and the Trade Marks Rules. The process is overseen by the Kenya Industrial Property Institute (KIPI), which is the body responsible for the registration and protection of industrial property rights in Kenya. This comprehensive guide will walk you through the various steps, requirements, and legal provisions related to trademark registration in Kenya.

Table of Contents

  1. Legal Framework

    • Trade Marks Act (Cap 506)

    • Trade Marks Rules

  2. Definition of a Trademark

    • What Constitutes a Trademark

    • Types of Trademarks

  3. Eligibility for Trademark Registration

    • Who Can Apply

    • Registrable and Non-Registrable Marks

  4. Application Process

    • Preliminary Search

    • Filing the Application

    • Examination of the Application

    • Publication and Opposition

    • Registration and Issuance of Certificate

  5. Duration and Renewal

    • Initial Registration Period

    • Renewal Process

  6. Rights Conferred by Registration

    • Exclusive Rights

    • Infringement and Remedies

  7. Conclusion

1. Legal Framework

Trade Marks Act (Cap 506)

The Trade Marks Act (Cap 506) is the primary legislation governing trademark registration in Kenya. It outlines the procedures, requirements, and legal implications of trademark registration.

Trade Marks Rules

The Trade Marks Rules provide detailed procedural guidelines for the implementation of the Trade Marks Act. They cover aspects such as application forms, fees, and procedural timelines.

2. Definition of a Trademark

What Constitutes a Trademark

According to Section 2 of the Trade Marks Act (Cap 506), a trademark is defined as:

  • Any sign capable of being represented graphically

  • Capable of distinguishing goods or services of one undertaking from those of other undertakings

Types of Trademarks
  • Word Marks: Consist of words, letters, or numerals.

  • Figurative Marks: Include logos, symbols, or images.

  • Composite Marks: Combine both word and figurative elements.

  • Three-Dimensional Marks: Include the shape of goods or their packaging.

  • Color Marks: Consist of a single color or a combination of colors.

3. Eligibility for Trademark Registration

Who Can Apply
  • Individuals: Both Kenyan citizens and foreign nationals.

  • Companies: Both local and international companies.

  • Associations: Trade associations or other collective entities.

Registrable and Non-Registrable Marks
  • Registrable Marks: Must be distinctive and not deceptive, scandalous, or contrary to law or morality.

  • Non-Registrable Marks: Marks that are generic, descriptive, or similar to existing registered trademarks.

4. Application Process

Preliminary Search
  • Purpose: To check for existing trademarks that may conflict with the proposed mark.

  • Procedure: Conducted at KIPI or through their online database.

Filing the Application
  • Form: Form TM 2 (Application for Registration of a Trademark).

  • Requirements:

    • Applicant's name and address

    • Representation of the trademark

    • List of goods or services

    • Class of goods or services (according to the Nice Classification)

    • Payment of the prescribed fee

Examination of the Application
  • Formal Examination: Checks for compliance with formal requirements.

  • Substantive Examination: Assesses distinctiveness and potential conflicts with existing trademarks.

Publication and Opposition
  • Publication: The application is published in the Kenya Industrial Property Journal.

  • Opposition Period: 60 days from the date of publication for any third party to oppose the registration.

Registration and Issuance of Certificate
  • No Opposition: If no opposition is filed, the trademark is registered.

  • Certificate: A certificate of registration is issued to the applicant.

5. Duration and Renewal

Initial Registration Period
  • Duration: 10 years from the date of application.

Renewal Process
  • Renewal Period: Every 10 years.

  • Procedure: Filing a renewal application and paying the prescribed fee.

6. Rights Conferred by Registration

Exclusive Rights
  • Use: Exclusive right to use the trademark in relation to the registered goods or services.

  • Licensing: Right to license the trademark to third parties.

  • Assignment: Right to transfer ownership of the trademark.

Infringement and Remedies
  • Infringement: Unauthorized use of a registered trademark.

  • Remedies:

    • Injunctions

    • Damages

    • Account of profits

    • Delivery up and destruction of infringing goods

Conclusion

Trademark registration in Kenya is a structured process governed by the Trade Marks Act (Cap 506) and the Trade Marks Rules. It involves several steps, including a preliminary search, filing an application, examination, publication, and potential opposition. Once registered, a trademark confers exclusive rights to the owner, which can be enforced through legal remedies in case of infringement. Understanding these legal provisions and procedures is crucial for anyone seeking to protect their brand identity in Kenya.

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