Registration Of Trade Names And Trade Marks In Kenya




This is a brief opinion on the requirements for registration of Trade Names and Trade Marks in the Republic of Kenya. For more information in regards to the same kindly email us at ewanyoike@kabauadvocates.com.

In this opinion we have enumerated on;

  1. The process of registering a Trade Mark in Kenya and the cost thereof;
  2. The process of registering trademarks/names outside the Kenyan jurisdiction;
    1. under ARIPO and the cost thereof;
    2. under the Madrid Protocol; and
    3. by applying to the designated country.

1.  THE PROCESS FOR REGISTRATION OF TRADE MARKS & NAMES IN KENYA

1.1   Definitions and the Law

In Kenya, the registration of Trade Marks is governed by the Trade Marks Act, Cap 506 of the laws of Kenya (hereinafter the “Act”) and is effected at the Kenya Industrial Property Institute’s registry (hereinafter “KIPI”).

Section 2 (1) of the Trademark Act defines a ‘trade mark” thus: "trade mark" means, ……………. a mark used or proposed to be used 

  1. in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person or distinguishing goods in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person”
  2. “in relation to services for the purpose of indicating that a particular person is connected, in the course of the business, with the provision of those services, whether with or without any indication of the identity of that person or distinguishing services in relation to which the mark is used or proposed to be used from the same kind of services connected in the course of business with any other person”.

The Trademark Act also defines a mark thus;

"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, or numeral, or any combination thereof;

The interpretation of these definitions is that names, drawings, pictures and monograms or a combination of them are registrable as Trade Marks under Kenyan law. Further, it means that the purpose of a Trade Mark is to distinguish the goods or services of a particular business venture from another. Accordingly, a Trade Mark may not be registered if it is deceptive, likely to confuse or is identical to another registered Trade Mark 

1.2          Persons Qualified to Register Trade Marks in Kenya

Individual persons, legal firms, partnerships, companies and cooperative societies can register Trade Marks in Kenya as long as they meet the requirements of the Act. As such, the details required to enable the Registration of a Trade Mark are;

  1. Name of the Individual, Firm, Cooperative Society or Company seeking to Register a Trade Mark;
  2. Nationality of the Applicant so as to determine the cost of Registration as it varies depending on whether the Applicant is a local or a foreigner;
  3. Postal Address, email, telephone number of the Applicant; and

(iv)  A representation of the proposed Trade Mark.

1.3          Categories of Trade Marks 

Trade Marks are registered in accordance with the International Classification of Goods and Services as detailed and constituted under the Nice Agreement of 1957 which is a system of classifying goods and services for the purposes of registering Trade Marks. 

Section 6 of the Trademarks Act provides that:

“1) A trade mark shall be registered in respect of goods or services, which shall be registered in respect of particular goods and services, which shall be classified in the manner specified in subsection (2). 

2) 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, one can register a Trade Mark in any of the Forty Five (45) Classes or a combination of the Classes in the Nice Classification based on the type of goods and services the proposed Trade Mark seeks to protect.

1.4         Procedure of Registration

                1.4.1      Search 

A preliminary search is conducted at KIPI for the purposes of determining whether the Trade Mark is available for Registration and to ensure there is no similar Trade Mark registered by another person that could be confused with the proposed Trade Mark. An application for search is made by the prospecting proprietor or through his agent on the prescribed Form TM27. This process can take one (1) day to seven (7) days to get results. Important to note is that if a Trade Mark is being registered in more than one class, each class is charged separately.

                1.4.2     The Application

Upon receiving a Preliminary Advice from KIPI on the availability of the proposed

Trade Mark for Registration, the person claiming to be the proprietor of the proposed Trade Mark should apply to the Registrar of Trade Marks on Form TM 2 accompanied by the specified number of the representations of the mark. Foreign applicants and/or persons who wish to be represented are required to file through an agent and thus the application should be accompanied by the form of authorization Form TM 1 (appointment of an agent) duly completed and signed and must have a duty stamp affixed on it. Further, for foreign applicants, the Application should also be accompanied by Form TM 32 for the purposes of entering of address of service in Kenya.

                1.4.3     Examination Stage

This stage is carried out by the KIPI officials and comprises of three (3) stages; 

                    1.4.3.1          Formality Examination

This entails close checking to for the purposes of determining whether the right documents have been filed, whether the forms included are properly filled, and the required fees is paid. 

                    1.4.3.2           Search by the Registrar

A search is conducted at the KIPI registry level to ascertain that there is no similar or closely resembling mark on the register, otherwise the present application can be refused on that ground. If there exists a similar mark from the same Applicant then an association is requested. 

                    1.4.3.3         Substantive Examination

At the substantive examination stage, the mark is examined to ensure its distinctiveness. The Applicant is usually requested to remove non distinctive matter and descriptive elements. However, where such may result in the loss of the identity or substantially affect the main features of the mark entry of disclaimer is normally requested. Such disclaimers include letters, numerals, geographical names, names of places, names of communities, general representation of human beings, words or figures common in the respective trade. On the other hand, logos, emblems, flags and marks of International Organizations are not registrable by anybody else except the respective Organizations or one authorized by them to do so. Generic names of products are also not registrable. 

                1.4.4     Advertisement

Where no grounds are found to refuse a Trade Mark application after examination, the Trade Mark is advertised in the Industrial Property Journal to allow any interested party an opportunity to raise objections to the pending application prior to registration. 

The information included in the journal include; the number and filing date, the representation of the mark, the class, the specification of the goods or services, the name and address of the applicant, any other claims (colour, claims, disclaimers). 

1.5          Opposition

Any aggrieved party with valid grounds may oppose the registration of a Trade Mark so advertised in the Kenya Gazette. An opposition must be made within sixty (60) days of the publication date, by filing a statement of opposition. 

The process of opposition is sometimes rather involving and complex, much like the normal court proceedings, during which both parties may file evidence and counter-arguments, cross examine the evidence of the other parties and make representations at an oral hearing. At the end of the process the Registrar makes a ruling that is binding. Any dissatisfied party can file an appeal through the High court. 

1.6         Registration

If there is no opposition to the Trade Mark after the statutory sixty (60) days period from the date of advertisement, or if an opposition has been decided in the applicants favour, the application will be registered and KIPI will issue a Certificate of Registration under Form 10a and enter the registration in the Trade Marks Register. 

It should also be noted that in case of an opposition during the advertisement stage, opposition proceedings have to commence and be finalized to allow the decision on whether or not to issue the certificate. The mark is registered as of the date of the application for registration, and the date is deemed to be the date of registration: 

1.7         Timelines for Registration

We can summarize the timelines given previously as follows;

  1. Collation of relevant documents, preparation and execution as appropriate; 1 day to 2 weeks depending on the speed of the Applicant to provide the relevant information.
  2. Search; 2 to 7 days;
  3. Application; 1 day or thereabouts;
  4. Formality examination; 3 to 7 days;
  5. Substantive examination and approval for advertisement; 
  6. Advertisement; 60 days
  7. Registration and issuance of certificate of registration; approximate 1 week.

The above approximate timelines amounts to one hundred and twenty (120) days.

1.8         Period of Protection

A Trade Mark registration is valid for ten (10) years from the date of application. Six (6) months prior to the expiry of the ten years, the registrar will notify the owner of the Trade Mark of the imminent expiry of the concerned Trade Mark.

The owner may then apply for a renewal which covers the next ten (10) years and the renewal can continue every ten (10) years thereafter upon payment of a renewal fee. Renewal of Trade or Service mark is done on Form TM 10. If at the expiration of the time prescribed for renewing the mark, the conditions have not been duly complied with, the Registrar may remove the Trade Mark from the register.

We offer assistance to our Clients by keeping a database of their Trade Marks and advise on renewal at the appropriate time.

1.9         Legal Fees, Registration Fees and Attendant Costs

We stand guided by the provisions of the Advocates Remuneration Order (Legal Notice No 35 of 2014) in charging legal fees and the Trade Mark fees is as given by the Kenya Industrial Property Institute (KIPI). Kindly see the costing schedule as attached hereto. 

2.            THE PROCESS FOR REGISTRATION OF TRADEMARKS/NAMES OUTSIDE THE KENYAN JURISDICTION

                2.1       REGISTRATION OF TRADEMARKS UNDER ARIPO

                2.1.1      Membership of ARIPO

The African Regional Intellectual Property Organization (ARIPO) Trade Mark system is governed under the Banjul Protocol with member countries Botswana, Lesotho, Liberia. Malawi, Namibia, Sao Tome & Principle, Swaziland, Uganda, Tanzania and Zimbabwe. As you may note, Kenya is yet to ratify the Banjul Protocol thus an Applicant cannot file for trademark directly with ARIPO. Where the Applicant is interested in filing under the ARIPO designated countries, the filing can be done under one of the countries spelt above and through registered patent agents in that country.

                2.1.2      Applicant, Filing and Representation p

An Applicant is a natural person or a legal corporate who has bona fide rights to apply for registration of a mark. An ARIPO application may be filed by any qualified natural or legal person, either in person or through an authorized representative. The representative is a Trade Mark agent or legal practitioner who is duly recognized by the national industrial property office of the Contracting State as having the right to represent the applicant. Where the Applicant neither is an ordinary resident nor has a principal place of business in any of the Member States, such Applicant must be represented on filing an application.

                2.1.3      Filing an Application; Filing Routes

A mark application may be filed directly with the ARIPO Office or indirectly with the national industrial property office any of the Contracting States acting as Receiving Office. An application filed with the office of the Contracting State acting as a receiving office will have the same effect as if it has been filed at the same date at the ARIPO Office. Filing of the application may be done online, by manner of personal delivery, email or registered mail, whichever method is convenient to the Applicant.

                2.1.4     Requirements for Filing Trademarks/Names under ARIPO         

The details required are as follows;

  1. Power of Attorney form for the Agents procuring the registration;
  2. Specification of goods/services;
  3. Ten (10) print of the mark if the Trade Mark is not a word mark;
  4. Classes of goods/services;
  5. Priority claim (if any);
  6. Assignment of priority right (if any); and
  7. Priority documents (if any).

                2.1.5      Transmittal of Application to the Filing Office 

If the application is filed with an industrial property office of a contracting state, that office is required to transmit the application to the ARIPO Office within one month of receipt of the application.

                2.1.6     ARIPO Online Services 

ARIPO has recently introduced online services to allow applicants, attorneys, agents and other users to conduct their ARIPO business electronically in a secure state of the art environment. This facility allows for online filing of IP files, online payment of fees, sending and receiving notifications and general tracking of filed applications.

2.1.7      Allocation of a Filing Date Requirements of a Filing Date

On receipt of the application, either from the applicant (or an agent thereof) or from a Receiving Office, the ARIPO Office undertakes an examination of the application. The examination is to determine a filing date of the application. A filing date is accorded on an application if it meets the following conditions;

  1. containing of an express or implied indication that registration is sought;
  2. disclosure of the identity of the Applicant;
  3. indications sufficient to contact the Applicant or his representatives (iv) a clear reproduction of the mark for which registration is sought; and

                                (v)          a list of goods or/and services for which registration is sought.

                2.1.8     Formality and Substantive Application

Contents of an ARIPO Mark Application

Application for registration of a Trade Mark should be made in a prescribed form. The form of application must contain the following:

  1. the applicant’s name and address;
  2. designation of the ARIPO Contracting State(s);
  3. descriptions of goods and/or services;
  4. corresponding class/classes of the goods and/or services in accordance with the Nice Classification;
  5. name(s) of colour(s) claimed (if any) as a distinctive feature of the mark;
  6. a reproduction of the mark in the form of a two dimensional, graphic or photographic reproduction; and
  7. a declaration of actual use or intention to use the mark.

The ARIPO Office will then examine the application as to formality and this entails checking that the application form is duly completed as per the above requirements, that if the application is filed by a representative a power of attorney is lodged and that the requisite application fees have been paid or a statement of commitment to settle them within twenty one (21) working days there-from (payable in US dollar) is attached. Nationals of a Contracting State can pay the prescribed fees in local currency equivalent to the prescribed fee through their industrial property office. If priority is being claimed, the applicant will need to lodge a priority document. Priority subsists within six (6) months.

                2.1.9     Appeals and Conversion

The ARIPO Office can refuse an application due to noncompliance with formal requirements. The applicant can request the Office to reconsider the refusal. If the Office still refuses, the applicant can appeal against the decision to the Office of the ARIPO Board of Appeal or may within three months from the date of refusal request that the application be treated in any designated state as an application according to the national law of that state (conversion). The decision of the board of appeal is final.  

2.1.10 Substantive Examination 

Substantive examination is conducted by a designated state in accordance with its national laws. Each of the designated states is given nine months within which to notify the ARIPO Office in writing (after the notification by ARIPO Office) that the mark shall have no effect in that state if registered. The designated state should give reasons for its refusal according to the national laws and this is communicated to the Office.

The Office then communicates the refusal to the applicant who is given an opportunity to respond either through the Office or to the designated state concerned. The refusal is subject to appeal or review under the national laws of the designated state. If the mark application is due for registration, the ARIPO Office will proceed to register the mark with respect to other designated states which did not object.

2.1.11 Registration, Publication and Effect of Registration 

Registration, Publication and Opposition

The Office then communicates the refusal to the applicant who is given an opportunity to respond either through the Office or to the designated state concerned. The refusal is subject to appeal or review under the national laws of the designated state. If the mark application is due for registration, the ARIPO Office will proceed to register the mark with respect to other designated states which did not object.  

Effect of Registration

The duration of registration of a registered mark is ten (10) years from the date of filing. The registration may be renewed for a further ten years on payment of the prescribed renewal fee. Rights conferred by the registered mark is the same in every designated state.

2.1.12 Fees 

  1. The cost of registration of one (1) Trade Mark in one (1) class designated to one country will be made as follows;

 ARIPO Trade Mark Application and Registration

Official fee

(US$)

Filing fee 

100

Designation fee for each country in one (1) class

50

Registration fee for each country in one (1) class

100

Total 

250

In addition to the above, there is the legal fees payable.

  1. The additional cost of applying to register one (1) mark in each additional class 

designated to one country will be made up as follows;                                                                       

ARIPO Trade Mark Application and Registration

Official

(US$)

fee

Designation fee for each country in each additional class

10

Registration fee for each country in each additional class

50

Total 

60

The official fees may be subject to change without prior notice.

2.1.13 Time Scales and Turn-Around Times for Filing under ARIPO

It takes us approximately one (1) year to register a Trade Mark if the Trade Mark does not encounter any conditions such as disclaimer requirements and citations.

                2.2     REGISTRATION OF TRADEMARKS UNDER THE MADRID SYSTEM

The Madrid system is also known as the “International Trademark System” and is made up of parties/countries that have contracted the Madrid Agreement and the Madrid Protocol (see the attached list of contracting parties).

Kenya is a member of the Madrid Protocol for registration of trademarks. The Madrid system is the most convenient and cost effective solution for registration and management of trademarks worldwide. An Applicant files and pays one set of fees to apply for protection to the one hundred and seventeen (117) countries though there is a negligible fee for each country as designated by the Applicant for protection. 

Procedures under the Madrid System

Filing is effected through the country of origin which then transmits the Application to WIPO for formal examination. The contracting Parties do however have their own specific requirements and procedures regarding applications or designations thus these also have to be complied with for the Applicant’s designated countries. 

Fees and Payments-Madrid System

Types of Fees

The fees payable under the Madrid System is as follows;

  1. the basic fee;
  2. a complementary fee for each contracting party designated; and
  3. a supplementary fee for each class of goods and services in excess of three

(3).

We can procure the relevant fee structure once the Applicant decides on the designation of making the Applications.

                                                                                                         

3.  REGISTRATION OF TRADEMARKS IN EACH SPECIFIC COUNTRY

The Applicant can also apply for trademark protection directly to each country that it wishes to procure protection.

Brief Opinion Prepared by Kabau & Associates Advocates, www.kabauadvocates.com +254 20 520 5835 or +254 20 720 443 923, ewanyoike@kabauadvocates.com

Would you like your own customized opinion?


We always aim at satisfying our clients’ needs within the confines of legal provisions. We take compliments and complaints seriously and seek to address clients’ complaints in a timely and efficient manner in order to ensure a win-win situation.

Subscribe to our newsletter to receive updates from our blog.