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Trademark Maintenance and Renewal Agreement in Kenya

A Trademark Maintenance and Renewal Agreement is a crucial document for safeguarding your intellectual property rights in Kenya. It outlines the terms and conditions for maintaining and renewing your trademark registration, ensuring its continued validity and protection.

Table of Contents

  1. Introduction

  2. Parties to the Agreement

  3. Trademark Details

  4. Maintenance and Renewal Obligations

  5. Payment of Fees

  6. Notice of Renewal

  7. Renewal Process

  8. Termination

  9. Dispute Resolution

  10. Governing Law and Jurisdiction

  11. Entire Agreement

  12. Notices

  13. Severability

  14. Waiver

  15. Confidentiality

  16. Counterparts

  17. Binding Effect

  18. Conclusion

1. Introduction

This Trademark Maintenance and Renewal Agreement (the "Agreement") is made and entered into as of [Date] by and between [Your Full Name], a [Your Business Type] with its principal place of business at [Your Business Address] (the "Owner"), and [Trademark Registrar Name], a [Registrar Business Type] with its principal place of business at [Registrar Business Address] (the "Registrar").

2. Parties to the Agreement

This Agreement is between the Owner, who is the registered owner of the trademark, and the Registrar, who is the authorized body responsible for trademark registration and renewal in Kenya.

3. Trademark Details

This Agreement pertains to the following trademark:

  • Trademark Name: [Trademark Name]

  • Registration Number: [Trademark Registration Number]

  • Registration Date: [Trademark Registration Date]

  • Goods or Services: [List of Goods or Services Covered by the Trademark]

4. Maintenance and Renewal Obligations

The Owner agrees to maintain and renew the trademark registration in accordance with the provisions of the Trade Marks Act, Cap 506 of the Laws of Kenya (the "Act"). This includes:

  • Payment of Renewal Fees: The Owner shall pay the prescribed renewal fees to the Registrar within the stipulated timeframes to ensure the continued validity of the trademark registration.

  • Use of the Trademark: The Owner shall continue to use the trademark in commerce for the goods or services covered by the registration. Non-use of the trademark may lead to its cancellation.

  • Notification of Changes: The Owner shall promptly notify the Registrar of any changes in the ownership, address, or other relevant details of the trademark registration.

5. Payment of Fees

The Owner shall pay the renewal fees to the Registrar as prescribed by the Act. The fees shall be payable in the currency specified by the Registrar. The Owner shall ensure that the fees are paid on time to avoid any lapse in the trademark registration.

6. Notice of Renewal

The Registrar shall notify the Owner in writing, at least six months before the expiry of the trademark registration, of the impending expiry and the need for renewal. The notice shall include the renewal fees and the deadline for payment.

7. Renewal Process

The Owner shall submit a renewal application to the Registrar within the stipulated timeframe, along with the required renewal fees. The Registrar shall review the application and, upon approval, issue a certificate of renewal.

8. Termination

This Agreement may be terminated by either party upon written notice to the other party, subject to the following conditions:

  • Lapse of Registration: If the trademark registration lapses due to non-payment of renewal fees or other reasons, this Agreement shall automatically terminate.

  • Cancellation of Registration: If the trademark registration is cancelled by the Registrar, this Agreement shall automatically terminate.

  • Mutual Agreement: The parties may mutually agree to terminate this Agreement by executing a written termination agreement.

9. Dispute Resolution

Any dispute arising out of or relating to this Agreement shall be settled amicably through negotiation between the parties. If the parties are unable to reach an amicable settlement, the dispute shall be referred to arbitration in accordance with the Arbitration Act, Cap 4 of the Laws of Kenya. The arbitration shall be conducted in Nairobi, Kenya, and the language of the arbitration shall be English.

10. Governing Law and Jurisdiction

This Agreement shall be governed by and construed in accordance with the laws of Kenya. The courts of Kenya shall have exclusive jurisdiction over any dispute arising out of or relating to this Agreement.

11. Entire Agreement

This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior or contemporaneous communications, representations, or agreements, whether oral or written.

12. Notices

All notices and other communications hereunder shall be in writing and shall be deemed to have been duly given when delivered personally, sent by certified mail, return receipt requested, or sent by reputable overnight courier service, addressed as follows:

  • If to the Owner:

    • [Your Full Name]

    • [Your Business Address]

  • If to the Registrar:

    • [Trademark Registrar Name]

    • [Registrar Business Address]

13. Severability

If any provision of this Agreement is held to be invalid or unenforceable, such provision shall be struck from this Agreement and the remaining provisions shall remain in full force and effect.

14. Waiver

No waiver of any breach of any provision of this Agreement shall constitute a waiver of any other or subsequent breach.

15. Confidentiality

The parties agree to hold confidential all information disclosed by the other party pursuant to this Agreement, except to the extent such information is already in the public domain or is required to be disclosed by law.

16. Counterparts

This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument.

17. Binding Effect

This Agreement shall be binding upon and inure to the benefit of the parties hereto and their respective successors and permitted assigns.

18. Conclusion

IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.

[Owner Signature]

[Owner Printed Name]

[Registrar Signature]

[Registrar Printed Name]

TLDR

This Trademark Maintenance and Renewal Agreement outlines the terms and conditions for maintaining and renewing a trademark registration in Kenya, ensuring its continued validity and protection. It covers obligations like payment of renewal fees, continued use of the trademark, and notification of changes.

Sources:

  • Trade Marks Act, Cap 506 of the Laws of Kenya

  • Arbitration Act, Cap 4 of the Laws of Kenya

Case Laws

  • No relevant case laws were found for this specific topic.


Sample Trademark Maintenance and Renewal Agreement


Trademark Maintenance and Renewal Agreement

This Trademark Maintenance and Renewal Agreement (the "Agreement") is made and entered into as of [Date] by and between [Your Full Name], a [Your Business Type] with its principal place of business at [Your Business Address] (the "Owner"), and [Trademark Registrar Name], a [Registrar Business Type] with its principal place of business at [Registrar Business Address] (the "Registrar").

1. Parties to the Agreement

This Agreement is between the Owner, who is the registered owner of the trademark, and the Registrar, who is the authorized body responsible for trademark registration and renewal in Kenya.

2. Trademark Details

This Agreement pertains to the following trademark:

  • Trademark Name: [Trademark Name]

  • Registration Number: [Trademark Registration Number]

  • Registration Date: [Trademark Registration Date]

  • Goods or Services: [List of Goods or Services Covered by the Trademark]

3. Maintenance and Renewal Obligations

The Owner agrees to maintain and renew the trademark registration in accordance with the provisions of the Trade Marks Act, Cap 506 of the Laws of Kenya (the "Act"). This includes:

  • Payment of Renewal Fees: The Owner shall pay the prescribed renewal fees to the Registrar within the stipulated timeframes to ensure the continued validity of the trademark registration.

  • Use of the Trademark: The Owner shall continue to use the trademark in commerce for the goods or services covered by the registration. Non-use of the trademark may lead to its cancellation.

  • Notification of Changes: The Owner shall promptly notify the Registrar of any changes in the ownership, address, or other relevant details of the trademark registration.

4. Payment of Fees

The Owner shall pay the renewal fees to the Registrar as prescribed by the Act. The fees shall be payable in the currency specified by the Registrar. The Owner shall ensure that the fees are paid on time to avoid any lapse in the trademark registration.

5. Notice of Renewal

The Registrar shall notify the Owner in writing, at least six months before the expiry of the trademark registration, of the impending expiry and the need for renewal. The notice shall include the renewal fees and the deadline for payment.

6. Renewal Process

The Owner shall submit a renewal application to the Registrar within the stipulated timeframe, along with the required renewal fees. The Registrar shall review the application and, upon approval, issue a certificate of renewal.

7. Termination

This Agreement may be terminated by either party upon written notice to the other party, subject to the following conditions:

  • Lapse of Registration: If the trademark registration lapses due to non-payment of renewal fees or other reasons, this Agreement shall automatically terminate.

  • Cancellation of Registration: If the trademark registration is cancelled by the Registrar, this Agreement shall automatically terminate.

  • Mutual Agreement: The parties may mutually agree to terminate this Agreement by executing a written termination agreement.

8. Dispute Resolution

Any dispute arising out of or relating to this Agreement shall be settled amicably through negotiation between the parties. If the parties are unable to reach an amicable settlement, the dispute shall be referred to arbitration in accordance with the Arbitration Act, Cap 4 of the Laws of Kenya. The arbitration shall be conducted in Nairobi, Kenya, and the language of the arbitration shall be English.

9. Governing Law and Jurisdiction

This Agreement shall be governed by and construed in accordance with the laws of Kenya. The courts of Kenya shall have exclusive jurisdiction over any dispute arising out of or relating to this Agreement.

10. Entire Agreement

This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior or contemporaneous communications, representations, or agreements, whether oral or written.

11. Notices

All notices and other communications hereunder shall be in writing and shall be deemed to have been duly given when delivered personally, sent by certified mail, return receipt requested, or sent by reputable overnight courier service, addressed as follows:

  • If to the Owner:

    • [Your Full Name]

    • [Your Business Address]

  • If to the Registrar:

    • [Trademark Registrar Name]

    • [Registrar Business Address]

12. Severability

If any provision of this Agreement is held to be invalid or unenforceable, such provision shall be struck from this Agreement and the remaining provisions shall remain in full force and effect.

13. Waiver

No waiver of any breach of any provision of this Agreement shall constitute a waiver of any other or subsequent breach.

14. Confidentiality

The parties agree to hold confidential all information disclosed by the other party pursuant to this Agreement, except to the extent such information is already in the public domain or is required to be disclosed by law.

15. Counterparts

This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument.

16. Binding Effect

This Agreement shall be binding upon and inure to the benefit of the parties hereto and their respective successors and permitted assigns.

IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.

[Owner Signature]

[Owner Printed Name]

[Registrar Signature]

[Registrar Printed Name]


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