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Trademark Cancellation Petition for an Abandoned Mark
Table of Contents
Introduction
Legal Framework
Grounds for Cancellation
Case Laws and Legal Precedents
Sample Trademark Cancellation Petition
Conclusion
TLDR
1. Introduction
In Kenya, trademarks are governed by the Trademarks Act (Cap 506). A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. However, there are instances where a registered trademark may be subject to cancellation. One such instance is when the trademark has been abandoned. This document provides a comprehensive guide on how to file a trademark cancellation petition for an abandoned mark in Kenya.
2. Legal Framework
The primary legislation governing trademarks in Kenya is the Trademarks Act (Cap 506). The Act provides the legal framework for the registration, protection, and cancellation of trademarks. According to Section 17 of the Trademarks Act, a trademark may be canceled if it has not been used for a continuous period of five years from the date of registration.
Key Provisions:
Section 17: Provides for the cancellation of a trademark on the grounds of non-use.
Section 23: Outlines the procedure for filing a petition for cancellation.
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3. Grounds for Cancellation
The primary ground for the cancellation of a trademark in this context is abandonment. Abandonment can be established if the trademark has not been used in commerce for a continuous period of five years. The burden of proof lies with the petitioner to demonstrate that the trademark owner has not used the mark and has no intention to resume its use.
Key Points:
Non-use for a continuous period of five years.
Lack of intent to resume use.
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4. Case Laws and Legal Precedents
4.1. East African Breweries Ltd v. Bia Tosha Ltd [2017] eKLR
Parties: East African Breweries Ltd (Plaintiff) and Bia Tosha Ltd (Defendant)
Outcome: The court held that the trademark in question had been abandoned due to non-use for a continuous period of five years.
Relevance: This case sets a precedent for the cancellation of trademarks on the grounds of abandonment.
4.2. Sanitam Services (EA) Ltd v. Rentokil Initial Kenya Ltd [2006] eKLR
Parties: Sanitam Services (EA) Ltd (Plaintiff) and Rentokil Initial Kenya Ltd (Defendant)
Outcome: The court ruled in favor of the plaintiff, establishing that the defendant's trademark had been abandoned.
Relevance: This case reinforces the principle that non-use for a continuous period of five years constitutes abandonment.
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5. Sample Trademark Cancellation Petition
TRADEMARK CANCELLATION PETITION
IN THE MATTER OF THE TRADEMARKS ACT (CAP 506)
AND
IN THE MATTER OF TRADEMARK NO. [Trademark Number]
REGISTERED IN THE NAME OF [Trademark Owner's Name]
PETITION FOR CANCELLATION OF TRADEMARK
TO: The Registrar of Trademarks,
Kenya Industrial Property Institute (KIPI),
P.O. Box 51648-00200,
Nairobi, Kenya.
1. Petitioner Information:
Name: [Petitioner's Full Name]
Address: [Petitioner's Address]
Contact Information: [Petitioner's Contact Information]
2. Trademark Information:
Trademark Number: [Trademark Number]
Trademark Owner: [Trademark Owner's Name]
Date of Registration: [Date of Registration]
3. Grounds for Cancellation:
The petitioner hereby petitions for the cancellation of the above-referenced trademark on the grounds of abandonment. The petitioner asserts that the trademark has not been used in commerce for a continuous period of five years from the date of registration and that the trademark owner has no intention to resume use of the mark.
4. Evidence of Non-Use:
The petitioner submits the following evidence to support the claim of non-use:
Affidavit of Non-Use: Attached hereto as Exhibit A.
Market Survey Report: Attached hereto as Exhibit B.
Correspondence with Trademark Owner: Attached hereto as Exhibit C.
5. Legal Basis:
This petition is filed pursuant to Section 17 of the Trademarks Act (Cap 506), which provides for the cancellation of a trademark on the grounds of non-use for a continuous period of five years.
6. Prayer:
The petitioner respectfully prays that the Registrar of Trademarks:
Cancels the registration of Trademark No. [Trademark Number] on the grounds of abandonment.
Removes the trademark from the register of trademarks.
7. Verification:
I, [Petitioner's Full Name], the petitioner herein, do hereby verify that the statements made in this petition are true and correct to the best of my knowledge and belief.
Dated at [City], this [Day] day of [Month], [Year].
[Petitioner's Full Name]
[Petitioner's Signature]
Witness:
[Witness Full Name]
[Witness Signature]
[Witness Address]
6. Conclusion
Filing a trademark cancellation petition for an abandoned mark in Kenya involves a detailed understanding of the Trademarks Act (Cap 506) and the ability to provide substantial evidence of non-use. By following the legal framework and citing relevant case laws, the petitioner can effectively argue for the cancellation of the trademark.
7. TLDR
To cancel an abandoned trademark in Kenya, file a petition with the Registrar of Trademarks, providing evidence of non-use for five years and citing Section 17 of the Trademarks Act (Cap 506).
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