Trademark Registration in Kenya

Trademark Registration in Kenya
In Kenya, a trademark or service marks can be registered with the Kenya Industrial Property Institute (KIPI), and in pursuant to the Kenyan Trade Marks Act (Cap. 506).
Requirements for completing and filing applications
In order to register the trademark in Kenya, you require the following:
a) The full name and address of the entity which will own the mark.
b) 12 black and white or coloured prints of the mark. It is best to register the mark in black and white so that the protection of the mark may be extended to any colour combination in which you may wish to use the mark.
c) A translation into English of all words in the mark which are in any other.
d) A signed form of authorisation in favour of our firm which authorises us to file and deal with the trademark application. The form of authorisation can be filed within a month of filing the application.
Examination procedures and time scales
The trademarks registry carries out substantive examinations of all trademark and service mark applications firstly to satisfy itself that the marks meet the requirements for registerability (i.e. they are distinctive enough to qualify for registration, they are not descriptive of the character and quality of the goods for which they will be registered and on which they will be used and they are not laudatory words or combinations of words) and secondly to ascertain whether there are any other registered marks or pending applications for marks which are identical or sufficiently similar to the mark applied for as to be likely to result in confusion or deception of the public.
The trademarks registry will usually provide the official filing date and number for an application within seven days of filing of the application. It can take up to 2 to 3 months for the registry to issue an initial examination report. It generally takes our trademarks registry 3 to 6 months to register trademarks or service marks.
Use of registered mark
Under section 29 of the Kenya Trade Marks Act, if a registered mark is not used commercially in Kenya for a continuous period of five years, a third party can apply successfully to have it cancelled from the Kenya register. Use of a registered mark by a registered user is however deemed to be use by the registered owner. Such use will be a good defence to any cancellation action taken under section 29 of the Kenya Trade Marks Act by a third party.
Renewal Fees
When a trademark is eventually registered, the registration is backdated to the date on which the application was filed. The initial period of protection is ten years from that date. Thereafter the registration is to be renewed for successive periods of ten years.
Reasons for Registering a Trademark
Valuable Asset - The most important reason to register your trademark is to preserve your rights in this valuable asset. In many countries of the world, even though you have created a trademark and are using the trademark, if you do not register that trademark, you have no rights in it. A third party can misappropriate "your" trademark and obtain ownership rights by registering before you do. Although there are many other countries, in addition to Kenya, which provide certain rights to mere trademark users, asserting trademark rights based on mere use of a trademark is expensive and time consuming, not to mention the fact that you may fail if your usage is not sufficiently notorious. Thus, a trademark registration is a valuable asset for use in asserting your trademark rights against other parties. Furthermore, since a trademark registration is viewed as an asset, it can be used to collateralize a loan or it can often be sold to a third party.

Fend Off Other Parties - Trademarks can be misappropriated innocently by coincidence, or intentionally, by competitors, distributors, or professional trademark pirates. Trademark pirates can learn about new and upcoming trademarks by attending trade shows and watching the media and thereafter seeking to register these trademarks in strategic foreign countries. They hope to sell these trademarks at a handsome profit to the companies which introduced the trademark. If you register first, you not only foil the trademark pirate, you also make it easier for other parties to determine that the trademark is already protected when they do a trademark search on a new trademark that they are considering using.
Prevent Trademark Dilution - Another important reason to register trademarks is to prevent what is known as "dilution". Dilution occurs when a number of companies use similar trademarks on similar goods. Potential purchasers are then exposed to numerous trademarks that have certain similarities as to these related goods, and this minimizes the legal and practical value of a trademark as a source identifier. Other companies are much less likely to adopt a trademark which is similar to or identical to your trademark if you have taken the necessary steps to register it. If you do not register your trademark, it is much more difficult for other parties to become aware of your interest in the trademark.
Potential Loss of Goodwill - Another danger is the loss of good will which can arise by an infringing product or service of poor quality. This can happen when someone else enters the marketplace and commences the sale of goods or services with the same or a similar mark. If those goods or services are of poor quality, purchasers may well associate the poor quality item with your company, resulting in your loss of good will and sales. However, this is less likely to occur if you register your trademarks, since many companies take steps to avoid infringing a trademark of which they are aware.
Defensive Registrations - Trademarks can also be registered in nearly all countries in the world outside the United States as a defensive measure. In those countries, a company or individual need not use its trademark prior to obtaining a registration. Therefore, even in potential markets, you can prevent a third party from registering or using a trademark if you are the first party to obtain a registration. By obtaining a registration in advance of your use, you can be virtually assured of the unfettered ability to exclusively use your trademark in that country provided you begin use before the registration is subject to cancellation for non use.
Licensing the Trademark - Another reason for registering trademarks is the monetary value of a trademark registration per se. Besides being a property right which can be sold or collateralized, a trademark can be licensed. Quite often, companies enjoy substantial revenue in royalties from licensing their trademarks. If a trademark is licensed, however, it is very important, not only to register the trademark, but also to record the license agreements, where possible. License agreements must be carefully drafted to assure quality control of the licensed products and/or services by the trademark owner. A trademark license should be reviewed by an attorney who is knowledgeable in these matters, since the improper drafting or enforcement of a license agreement or the failure to record a license agreement can result in the invalidity of the trademark.

Cyrus

 
 

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