A Guide to Trademark Registration and Renewals

Trademark registration is an essential step for any business looking to protect its brand name,
logo, or slogan. Whether you’re launching a new company or rebranding an existing one,
applying for a trademark ensures that your brand remains exclusive and safeguarded from
unauthorized use. This article will provide a general guide on trademark registration and their
renewals thereafter helping the owner protect their business identity effectively.
Why Trademark Registration is Important
A trademark legally protects a brand name, logo, or symbol used to identify a product or service.
By filing a trademark, you gain exclusive rights to use the brand in commerce, preventing others
from copying or infringing on your intellectual property . Trademark protection enhances your
brand’s recognition, adds value to your business, and secures your market presence.
The Basics when applying for a Trademark
Applying for a trademark is a straightforward process. Here are the steps to apply for trademark
registration:

1. Conduct a Trademark Registration Search: Before filing, it’s crucial to ensure that no
   one else has registered a similar trademark. This reduces the risk of rejection due to
   duplication. By performing a diligent search, you reduce the risk of rejection during the
   registration process, saving you both time and legal expenses.
2. File the Application: If the search is successful, one is required to submit an
   Application for Registration through a national trademark office like the Kenya Industrial
   Property Institute (KIPI) when registering only in Kenya or register in several countries
   through the Madrid Protocol system.
   The Madrid system applies when a proprietor intends to file their trademark in
   several countries which have signed up to the protocol. They will first file the
   trademark application in Kenya and subsequently file the Madrid Application using
   Kenya as country of origin and designating selected countries under the system.
3. Provide Necessary Information: Include details such as the proposed trademark
   name, samples of the proposed logo, trademark description, the applicant’s name,
   physical address, postal address, and email and telephone number.
4. Pay the Filing Fees: Trademark registration comes with specific fees, which vary by
   country and jurisdiction. The proprietor can register as many classes as possible subject
   to the nature of goods and services. There is a cost to every class registration.
5. Wait for Examination: Trademark applications are reviewed by an examining attorney
   to confirm compliance with trademark laws.

Brand Name Registration: A Key Step in Business Protection
Registering your brand name as a trademark ensures that it becomes legally protected. This
process can prevent other businesses from using a similar name, which might confuse
customers or damage your brand reputation. When you trademark your business name, it
becomes a valuable asset, making it easier to defend in legal disputes.
What is the difference between a business name and a
trademark?
A business name identifies the company that provides the goods or services while a trademark
identifies the goods or services themselves.
How to Trademark My Business Name
To trademark your business name, follow these steps:

1. Search for Similar Names: Start by conducting a trademark registration search to
   ensure no similar names are already registered.
2. Select the Right Class of Goods/Services: Trademarks are categorized into classes
   based on the type of goods or services you offer. Ensure that your business name is
   registered under the correct class.
3. Submit the Application: File your trademark application through the local trademark
   office.
4. Monitor the Application Process: After filing, you will need to monitor the process for
   any objections or additional requirements from the examining attorney.
   International Trademark Registration: Protecting Your Brand
   Globally
   If your business operates or intends to operate in multiple countries, an international trademark
   registration is vital. This helps ensure your brand name, logo, or slogan is available for
   registration in different regions.
   An international trademark registration can be conducted through the Madrid System, a treaty
   that allows for the registration of trademarks in multiple countries with a single application.
   The Madrid System procedure is that the filing is effected through the country of origin which
   then transmits the application to WIPO for formal examination.
   The Madrid Protocol member countries have their own specific requirements and procedures
   regarding applications or designations which have to be complied with for the Applicant’s
   designated countries.
   Categories of Trade Marks
   Trademarks are registered in accordance with the International Classification of Goods and
   Services in accordance with the Nice Agreement of 15 th June, 1987.

Section 6 of the Trade Marks Act Law in Kenya provides that:
“(1) A trade mark shall be registered in respect of particular goods or services, which shall be
classified in the manner specified in sub-section (2).
(2) The goods and services in respect of which registration of a mark is applied for shall be
classified in accordance with the International Classification of Goods and Services”. Therefore,
a trade mark may be registered under any of the 45 classes or a combination of any of the
classes subject to the nature of goods and services.
Renewal of Trade Marks: Keeping Your Trademark Active
The renewal of trade marks occurs upon expiry of the ten (10) years from the effective date of
registration or from the date of the last renewal.
The renewal of a registered trade mark is effected on the Register of Trade Marks upon the
registered proprietor of the trademark submitting an application on Form TM 10 and payment of
the prescribed fees which covers ten (10) additional years.
If the renewal fees is not received on the due date, the Registrar shall publish the removal of the
trade mark from the register for non-renewal.
The Registrar must send a sixty (60) day notice in writing to the registered proprietor at his
business address and at his address of service as a reminder of the renewal due date.
The renewal process therefore includes:

1. Submitting a renewal application before the expiration date.
2. Paying the required renewal fee.
3. Confirming that the trademark is still in use.
4. Providing necessary documentation.
   Why should a trademark be renewed?
5. To prevent competitors from using similar marks.
6. Maintaining exclusive rights to the brand.
7. Demonstrating active use and intention to continue with the business.
8. Preserving the market position.

For registration and renewal of trademarks, contact Ombogo and Company Advocates on email
at legal@ombogo.co.ke or Telephone number +254 771 775520 or +254 703 741276