Trade marks in Kenya are regulated by the Trade Mark Act (Cap 506) Laws of Kenya. The institution charged with the mandate to register trade marks is the Kenya Industrial Property Institute (hereinafter "KIPI").
2.0 Process of Registration
The process of registration of trade marks undergoes the following stages:
- Preliminary Search;
- Application for Registration;
2.1 Preliminary Search
Before applying for the registration of a trade mark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark which could be confused with the intended trade mark. An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on Form TM 27 in the Act.
A search is not mandatory but is advisable for the following reasons;
- It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in it's present form;
- It will also help one avoid trade mark infringement and potential lawsuits if one went straight ahead in applying for registration.
2.2 Application for Registration
Once there is a confirmation that the mark is available for registration in a particular/various class(es), the next step would be to apply for registration of the mark.
A person claiming to be the proprietor of a trade mark, used or proposed to be used by him, and who is desirous of registering it applies for registration vide form TM 2 in the Act. This application is usually accompanied by seven (7) representations of the mark.
Foreign applicants are required to file through an agent and thus the application should be accompanied by the form of authorization Form TM 1 in the Act or the power of attorney duly completed and signed and must have a duty stamp affixed on it.
The application should also be accompanied by form TM 32 in the Act for entry of the address of service in Kenya. The applicant is required to file a separate application for each mark in each different class. On However, one can apply for registration of a mark in different classes.
Once the Application for registration is received, it then proceeds for examination. The mark will undergo three types of examination:
- Formality examination: this involves finding out whether the right documents are filed, whether the forms included are properly filled, and the required fees is appropriately paid. It is necessary that the class should be checked against the specification and confirm that the name, description and address of the Applicant is clearly written;
- Search: A Search is conducted to ascertain that there is no similar or closely resembling mark is on the register, otherwise the present application can be refused on that ground. If there exists a similar mark from the same applicant ordinarily an association is requested.
- Substantive examination: During substantive examination, the mark is examined as to its distinctiveness. Normally the applicant is requested to remove non distinctive matter and descriptive elements. Where removal of such matter may result in the loss of the identity or substantially affect the main features of the mark entry of disclaimer is normally requested. Letters, Numerals, geographical names, names of places, names of communities, general representation of human beings, words or figures common in the respective trade are normally disclaimed. Logos, emblems, flags and Marks of International Organizations are normally 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.
Once the examination is complete KIPI will then communicate to the applicant or the Agent of the approval or disapproval. Incase of approval, the mark proceeds to advertisement. Incase of disapproval, one may appeal against the decision or abandon the application.
Once the Application accepted, advertisement is the next step. The Trade mark is advertised in the KIPI Journal (which is published monthly). This is to allow any interested party an opportunity to raise objections to the pending application prior to registration.
The information included in the Journal notice 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.)
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 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.
If there is no opposition to the trade mark after the statutory 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 the Institute will issue a Certificate of Registration and enter the registration.
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.
3.0 Transaction Cost
The cost in the registration of trade marks is set out in the Act. A basic registration transaction will usually cost as indicated below:
|Search Fees||KES 2 000.00|
|Search Fee for each subsequent class||KES 1 000.00|
|Agency Fees||KES 1 000.00|
|Stamp Duty on TM1||KES 500.00|
|Application fee for the first class||KES 4 000.00|
|Application fee for each subsequent class||KES 3 000.00|
|Advertisement||KES 3 000.00|
|Advertisement fee for each subsequent class||KES 2 500.00|
|Registration||KES 2 000.00|
|Registration fee for each subsequent class||KES 1 500.00|
As regards legal fee, The Advocates (Remuneration) (Amendment) Order 2009 sets the minimum fee to be charged for professional services rendered. In this case professional service fee is determined by the Remuneration Order, the amount of work and various complexities involved in the same.
Njoroge Regeru & Co. Advocates