What is a TradeMark?
A trademark is a distinguishing mark, slogan, device, brand, label, ticket, name, signature, word, letter or numerical, or any combination thereof that distinguishes the goods produced by one business, from those of another.
What is a register of trademarks?
Firstly the Trade Marks Act, Cap 506, Laws of Kenya defines it as a record where all registered trademarks are entered.
They must have their names, addresses, and descriptions of their owners and licensees, the notification of assignment and transmissions.
They also need to show limitations and other matters related to registered trademarks.
Importantly the register is kept under the management and control of the Registrar of trademarks and open to public inspection.
Which body handles trademark registration?
Kenya Industrial Property Institute (KIPI) located at KIPI Centre, Kabarsiran Avenue, Off Waiyaki Way. The registration process is handled at the trade marks registry.
In case following up on the registration body might be a problem for your busy schedule. There are trademark registration professionals who can assist you through the process. These include most Intellectual property Law Firms in Kenya.
Why is it important to register your trademark?
A trademark is an identity that distinguishes the business of one entity from another. It brings out the uniqueness and exclusivity of any particular business.
It however enables consumers to identify the goods or services of a particular company, so as to distinguish it from other identical or similar products provided by competitors.
Registration of a trademark gives the registered entity the exclusive rights to prevent others from marketing similar products under the same or a confusingly similar mark.
Under Section 5 of the Trade Mark Act, no person is entitled to bring an action for infringement, if their trademark is unregistered.
The proprietor of a registered trademark has the right to institute civil proceedings against an infringer.
A registered trademark is a valuable asset for business expansion especially through licensing or franchising.
Requirements of registration of trademarks in Kenya
- The name of an individual, firm or company represented in a special or particular manner.
- The signature of the applicant for registration.
- An invented word or invented words.
- A word or words having no direct reference to the character or quality of the goods.
- Any other distinctive mark.
Who is authorized to apply for a trademark?
A proprietor of a trademark he uses or proposes to be using can apply for registration.
Trademark Registration Procedure in Kenya, How to register a Trademark
Though not mandatory, it is important to carry out a search and to seek preliminary advice as to whether you can register the trade mark or not.
The search process saves the applicant time and unnecessary expenses if the a rejection of the application occurs.
The statutory search request form is TM 27.
Forward a duly completed application form which shall include your contact details, description of the goods or services, a representation of the mark, payment of the required fee, and the class or classes that the you intend to register the Mark under.
The Nice Agreement on International classification of goods and services applies to specify and limit the extension of the trade mark rights by determining which goods or services the mark covers.
The relevant application form is TM2.
The Registrar of Trade marks examines the application to ensure: that you have properly filled the application form. He confirms that it contains all the necessary information and a confirmation that the mark is not in conflict with any existing mark on the register and is available and acceptable for registration.
Once approved, the applicant will pay the publication fee (Trademark Registration Fees).
Once KIPI accepts the trademark for registration, the Registrar will publish the mark in the KIPI Industrial Property Journal for a period of sixty (60) days to allow any person to raise any opposition to the trade mark registration.
If no one raises any opposition, it proceeds for registration. The Applicant is then required to pay the registration fees.
This is the final stage of the process. The registration process will only occur under the following circumstances:-
- No one has opposed the application and the time for filing notice of opposition has expired.
- Someone opposed the application and the decision is in favor of the applicant.
- The applicant has paid all the charges due inclusive of the registration fees.
- The applicant has complied with any and all conditions for the registration of the trademark prescribed by the Registrar.
THE DURATION AND RENEWAL OF A REGISTERED TRADE MARK
The Trade Marks Act (Cap 506, Laws of Kenya) stipulates that the initial registration of a trade mark shall be valid for ten (10) years.
You may renew the trademark indefinitely by payment of the required registration renewal fees after every ten years.
Your Trusted Trademark Lawyer in Kenya
At Ombogo and Company Advocates, we are undisputedly the most trusted and reputable trademark lawyers in Kenya. With a track record of excellence and a team of highly skilled legal experts, we have carved a niche for ourselves as the go-to firm for all matters related to trademarks. When looking for a trademark attorney in Kenya, we are your first option.