CAPACITY OF NON-CITIZENS TO HOLD ABSOLUTE TITLES TO LAND IN KENYA

INTRODUCTION

The Constitution of Kenya at Article 40 gurantees the right to property to ALL persons, whether citizens or non-citizens. The right to acquire and hold interest in land is envisaged within this provision.

This right, like most other rights, is not absolute. For instance, whereas one may acquire and own property of any description in any part of the Kenyan territory, the law grants the State the power of eminent domain (and or compulsory acquisition) over private property if the same is deemed necessary in public interest (subject to payment in full and just compensation and the right to access to court for redress).

HOLDING OF TITLES TO LAND BY NON-CITIZENS

The issue of land holding by non-citizens is adequately envisaged under Article 65 of the Constitution of Kenya 2010, which is to the effect that non-citizens can hold interest in land provided that such interests are restricted to LEASEHOLD INTEREST and no more. In addendum, the lease term must not exceed a period of more than 99 years (See Art. 65 (1) of the Constitution of Kenya, 2010), and should any agreement purport to covenant a longer duration, such leases would be contrued as 99-years lease for all intents and purposes (See Art. 65 (2) of the Constitution of Kenya, 2010).

As such,  an agreement for the sale of a freehold title to a non-citizen would be illegal and or enforceable. However, an agreement granting a lease for over 99 years would not necessarity be illegal but the lessee will be entitled to a 99 year lease notwithstanding covenants to contrary in any deed or agreement between the parties.

CONCEPT OF TRUSTEESHIP IN LAND HOLDING

The Former Constitution of Kenya did not purport to restrict land holding by non-citizens. This was due to the fact that contemporary challenges in property acquisition and manner of their use in the country had not been contemplated.

However, with real challenges such as scarcity of land for the local poulation, terrorism, money laundering and influx of illegal migrants into the country (some of whom are adequately resourced), the drafters of the Constitution were creative in sealing loopholes for attempts by non-citizens to hold freehold titles to land. Article 65 (3) of the Constitution envisages and thwarts possible avenues for maneuvers by unscrupulous non-citizens to acquire freehold titles, for instance, through the use of corporate entities whose shareholding are held by citizens to acquire freehold titles.

In company law, the case of Salomon v. Salomon [1897] AC 22 established the principle  of corporate personality - that a company is a distinct entity seperate from its owners/shareholders, and will all rights like any human person, including right to hold property. And with the invention of the concept of trusteeship, non-citizens would easily incorporate companies with Kenyan citizens as shareholders/directors subject to underlying Trust Deeds and Rights Deeds. The twin documents would often recite that all shares in the company are held in trust for a third party (non-citizen).

In view of such possibilities, the Constitution considers a corporate body as a citizen (and therefore entitles to Freehold Title) if the same is WHOLLY owned by one or more citizen. Property held by a corporate entity will also be considered as held by a Citizen only if the BENEFICIAL INTEREST in the TRUST PROPERTY is held for the benefit of A CITIZEN.

CONCLUSION

Whereas non-citizens can hold leasehold interest over land in Kenya, the law expressly outlaws holding of freehold interest by non-citizen. As such, any attemp to enter into a transaction for the holding of freehold interest in land in favour of a non-citizen would be based solely on good faith, for which no court of law will enforce (for ILLEGALITY - being contrary to express provisions of the law, and the Court will not assist a party enforce an illegal contract - See generally Cope v Rowlands (1836) 2 M & W 149).

In view of the above, it would be easy to proclaim that the Constitution of Kenya is discrimatory as against non-cititens in respect of right to hold freehold titles. Interestingly, however, a careful construction of Article 27 (4) of the Contitution reveals that it prohibits discrimination on the basis of "race, sex, pregrancy, marital status, health status, ethnic or social origin, colour, age, disability, religion, conscience, belief, culture, dress, language or birth" BUT does allow discrimination on the basis of Nationality or Citizenship, albeit tacitly. As such, an argument as to the unconstitutionality of such discrimination would be unsustainable in law.

Feel free to contact us at stralexgroup@gmail.com for any enquiries on the matters addresed hereinabove or incidental to the same.

Teddy OKELLO
Centre for Legal Research & Policy Development, a participating consultancy firm in the SLS Group of consultancies.

REMEDIES AVAILABLE ON REGISTRATION OF TWO COMPANY WITH SIMILAR NAMES

INTRODUCTION

In law, the registration of a company name disentitles all and sundry from using or attempting to use the company’s name without its consent, since the existence of two or more companies with similar names is likely to occasion confusion in the exercise of their respective rights.

Such as state of affairs is untenable in law and may result of huge losses from passing off, loss of goods and documents due to deliveries to wrong destinations, loss of reputation as a result of actions of another company with similar name.

For these reasons, Section 19 of the Companies Act, Cap 489 of the Laws of Kenya stipulates that:

“No name shall be reserved, and no company shall be registered by a name which consists of abbreviations, initials or by a name, which, in the opinion of the registrar, is undesirable.”

The Companies Act provides a window of redress by virtue of section 20 (2) (a) of the Act. This section provides as follows:

“If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name is registered by a name which, in the opinion of the registrar, is too like the name by which a company in existence is previously registered, the first-mentioned company may change its name WITH THE SANCTION OF THE REGISTRAR and, if he so directs within six months of its being registered by that name, shall change it within a period of six weeks from the date of the direction or such longer period as the registrar may think fit to allow.”

This provision is succinct in that it empowers the Registrar of Companies to direct such a subsequently registered company to change its name, which notice must be complied with within six (6) months, failure of which its officers becomes liable to a fine of Kshs. 100/= for every day during which the default subsists.

As such, where two names exists, the first company to be incorporated should write to the Registrar of Companies to require the second company to change its name within the stipulated statutory period.

REMEDY ON NON-COMPLIANCE WITH THE REGISTRAR’S NOTICE TO CHANGE NAME

Regrettably, however, the Companies Act does not stipulate that the Registrar may revoke a Company name suo moto notwithstanding the expiry of a notice to change name and/or non-compliance therewith. He can only subject such Company and its officers to a fine of a paltry Kshs. 100 for each day of such non-compliance.

For these reasons, we advise that one may request the Registrar of Companies to move the Court under Section 385 (1) of the Companies Act for an order compelling the defaulting company to change its name within a specified number of days, or risk having the said Company name being revoked and hence effectively deregistered by the Court. The said section provides that:

1)       If a company, having made default in complying with any provision of this Act which requires it to file with, deliver or send to the registrar any return, account or other document, or TO GIVE NOTICE TO HIM OF ANY MATTER[1], fails to make good the default within fourteen days after the service of a notice on the company requiring it to do so, THE COURT MAY, ON AN APPLICATION MADE TO THE COURT BY any member or creditor of the company OR BY THE REGISTRAR, make an order directing the company and any officer thereof to make good the default within such time as may be specified in the order.

2)       Any such order may provide that all costs of and incidental to the application shall be borne by the company or by any officer of the company responsible for the default.

3)       Nothing in this section shall be taken to prejudice the operation of any written law imposing penalties on a company or its officers in respect of any such default as
aforesaid.

REMEDY ON REGISTRAR’S FAILURE TO GO TO COURT

In the event that the Registrar does not comply with your request, you may instructive your attorney to file a suit under Certificate of Urgency for INTERIM-INJUNCTION ORDERS restraining the second company from transacting any business under the relevant name, pending you application of PERMANENT INJUNCTION against second Company.

Such an application would be supported by the Registrar’s letter directing second company to change its name, an Affidavit from the Registrar to the effect that he had issued a notice to the said company to change its name but the second company has inordinately declined to comply therewith, and finally, annex an Affidavit from one of the Directors of your company verifying facts contained in your application of for injunction.    

CONCLUSION

The law permits the change of name where two companies have been incorporated with a similar name. Ordinarily, principles of equity comes into play and the first in time can request the registrar to direct the subsequently incorporated company to change its name. However where such a second company refuses to comply with the notice, the Registrar have no power to revoke the name. As such, the remedy is found in the liberal construction of the Companies Act which permits the Registrar to proceed to Court for the appropriate orders. As such, until the Companies Act is amended to empower the Registrar of Companies to strike off the name of non-compliant companies, the remedy is to initiate Injunction proceedings against the infringing company.

We hope this opinion suffices your concerns on legal remedies in the event of double registration of a company name. However, should you need further clarification, please do contact us at stralexgroup@gmail.com.    

               

Teddy OKELLO

MD & Group CEO

Corporate & Company Law Consulting Group - a practice division of Strategic Legal Solutions Group

[1] We opine that this includes the Registrar’s Notice to Change Name under the Act.

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TIMELINES WITHIN WHICH A PUBLIC OFFICER MUST RESIGN FROM PUBLIC OFFICE BEFORE VYING FOR A POLITICAL OFFICE - OFFICE OF COUNTY GOVERNOR

1.       INTRODUCTION

In this advice, we determine the law on timelines within which a public officer must resign from public office before vying for a political office, in this case, the office of the County Governorship. In preparing this advice, we have considers:

a)       The Constitution of Kenya;

b)       The Election Act, Act No. 24 of 2011; and

c)       Independent Electoral and Boundaries Commission Act, Act 9 of 2011.

2.       THE ADVICE

2.1.  EXECUTIVE AUTHORITY IN COUNTY GOVERNMENT

The election to governorship in a devolved government is envisaged and governed by the Constitution of Kenya and the Election Act, Act No. 24 of 2011.

The Constitution dictates that executive authority in the county government shall vest in the County Executive Committee. (See Article 179 (1) of the Constitution)

The County Executive Committee is composed of the County Governor, Deputy County Governor and such other persons as the county governor may nominate with the approval of the National Assembly. (See Article 179 (2) of the Constitution)

The County Governor and the Deputy County Governor are the Chief Executive and Deputy Chief Executive Officers of the county, such that when the county governor is absent, the Deputy County Governor acts as the county governor. (See Article179 (4) of the Constitution)

Meanwhile, members of a county executive committee are accountable to the county governor for the performance of their functions and exercise of their powers (See Article 179 (6) of the Constitution)

2.2.  ELECTION OF COUNTY GOVERNOR

Article 180 (1) of the Constitution dictates that the county governor shall BE DIRECTLY ELECTED BY THE VOTERS REGISTERED IN THE COUNTY, on the same day as a general election of Members of Parliament, being the second Tuesday in August, in every fifth year.

TO BE ELIGIBLE FOR ELECTION AS COUNTY GOVERNOR, a person MUST BE ELIGIBLE FOR ELECTION AS A MEMBER OF THE COUNTY ASSEMBLY. (See Article 180 (2) of the Constitution.)

2.3.  ELIGIBILITY FOR ELECTION AS MEMBER OF THE COUNTY ASSEMBLY

To be eligible for election as a member of a county assembly, the prospective candidate must:

1.       Be registered as a voter;

2.       Satisfy any educational, moral and ethical requirements prescribed by the Constitution or an Act of Parliament; and

3.       Either:

3.1.  be nominated by a political party; or

3.2.  is an Independent Candidate supported by At Least Five Hundred Registered Voters in the ward concerned

SECTION 43 (5) of the Election Act, 2011 stipulates that a public officer who intends to contest an election under the act must resign from public office at least seven months before the date of election.

Fundamentally, however, THIS SECTION “SHALL NOT APPLY TO- (a)  the President; (b)  the Prime Minister; (c)  the Deputy President; (d)  a member of Parliament; (e)  A COUNTY GOVERNOR; (f)  a deputy county governor; (g)  a member of a county assembly.” (See Section 45 (6) of the Election Act, 2011)

Subject cited exceptions, the Constitution dictates that a holder of a public office cannot, while still serving in that public office, vie for the post of County Governor.

2.4.  DISQUALIFICATION FROM ELECTION AS MEMBER OF COUNTY ASSEMBLY

A person is disqualified from being elected a member of a county assembly if the person:

1.       is a State officer or other public officer, other than a member of the county assembly;

2.       has, at any time within the five years immediately before the date of election, held office as a member of the Independent Electoral and Boundaries Commission;

3.       has not been a citizen of Kenya for at least the ten years immediately preceding the date of election;

4.       is of unsound mind;

5.       is an undischarged bankrupt;

6.       is serving a sentence of imprisonment of at least six months; or

7.       has been found, in accordance with any law, to have misused or abused a State office or public office or to have contravened Chapter Six. (See Article 193 (2) of the Constitution)

2.5.  FURTHER LIMITATIONS

In addition to disqualifying factors above, Section 26 (1) of the Election Act provides that a person who DIRECTLY OR INDIRECTLY PARTICIPATES in any manner IN ANY OR PUBLIC FUNDRAISING OR HARAMBEE WITHIN EIGHT MONTHS PRECEDING A GENERAL ELECTION or during an election period, in any other case, shall be disqualified from contesting in the election held during that election year or election period.

2.6.  INITIATION OF COUNTY GOVERNOR ELECTION

Whenever an election for a County Governor is to be held, the Commission shall publish a notice of the holding of the election in the Gazette and in the electronic and print media of national circulation, in the case of a general election, at least sixty days before the date of the general election. (See Section 17 (1) of the Election Act)

The notice of the holding of the election in the Gazette shall be in the prescribed form and shall specify:

(a) the day for the nomination of candidates for the county governor election; and

(b) the day or days on which the poll shall be taken for the county governor election, which shall not be less than twenty-one days after the day specified for nomination. (See Section 17 (2) of the Elections Act)

As such, it is our advice that A Candidate Should Vacate Public Office Before The Date Of Nomination Of Candidates For The County Governor Elections, failure of which a nomination may be challenged on the ground that a candidate is disqualified by virtue of Article 193 (2) (a) of the Constitution.

Further, the Constitution of Kenya does not purport to dictate the time when a candidate shall be deemed to have presented himself for an election. Therefore, the issue as to the time as to when one should vacate public office for purposes of qualification to vie for a political office can only be obtained from interpretation of the law. 

Consequently, the decision as to the time of vacation of public office would be based on the notice issued by the Independent Electoral and Boundaries Commission on the day for the nomination of candidates for the county governor elections.

2.7.  TRANSITON OF MUNICIPAL TO COUNTY GOVERNMENT

The Constitution provides that while an election is being held to constitute a county assembly, the EXECUTIVE COMMITTEE OF THE COUNTY, AS LAST CONSTITUTED REMAINS COMPETENT TO PERFORM ADMINISTRATIVE FUNCTIONS until a new executive committee is constituted after the election. (See Article 198 of the Constitution)

The operations of the county shall therefore expected to proceed without interruption, and immediately upon declaration of the lawful appointment and swearing in of the new County Assembly and County Executive Committee, the new County Government automatically assumes management of county executive and legislative affairs. It should however be noted that a candidate must first resign from a public office before vying for County Governorship, which is a political office.

3.       CONCLUSION

Neither the Constitution nor the Election Act 2011 dictate the period within which a public officer must vacate office before running for a political office, and the office of the County Governorship for that matter. The legal position on the issues is therefore derived from interpretation. In this case, we advice that:

3.1.  A Candidate Should Vacate Public Office Before The Date Of Nomination Of Candidates For The County Governor Elections, failure of which a nomination may be challenged on the ground that a candidate is disqualified by virtue of Article 193 (2) (a) of the Constitution;

3.2.  The Constitution of Kenya does not purport to dictate the time when a candidate shall be deemed to have presented himself for an election. Therefore, the issue as to the time as to when one should vacate public office for purposes of qualification to vie for a political office can only be obtained from interpretation of the law;

3.3.  The decision as to the time of vacation of public office would be based on the notice issued by the Independent Electoral and Boundaries Commission on the day for the nomination of candidates for the county governor elections; and

3.4.  It is therefore safe to continue serving in a public office until a day before the date set for nomination of candidates for the county governor elections.

3.5.  It is also apparent that the current parliamentarians sought to protect 5hemselves by creating suitable Clauses in the Election Act. Section 43 (5) of the Election Act, 2011 stipulates that a Public Officer who intends to contest an election under the act must resign from public office at least seven months before the date of election. THIS SECTION, HOWEVER, “SHALL NOT APPLY TO - (A)  THE PRESIDENT; (B)  THE PRIME MINISTER; (C)  THE DEPUTY PRESIDENT; (D)  A MEMBER OF PARLIAMENT; (E)  A COUNTY GOVERNOR; (F)  A DEPUTY COUNTY GOVERNOR; (G)  A MEMBER OF A COUNTY ASSEMBLY.”

        For further clarification on the issues convassed herein or incidental thereto, please contact the undersigned a stralexgroup@gmail.com.

       Teddy OKELLO

       MD & GROUP CEO

       Strategic Legal Solutions Group

AN INTRODUCTION TO FUTURES AND OPTIONS

FUTURES

Futures are promissory notes. They take the form of contractual agreements, generally made on the Trading Floor of a Futures Exchange, to buy or sell a particular commodity or financial instrument at a pre-determined price in the future. Futures contracts detail the quality and quantity of the underlying asset; they are standardized to facilitate trading on a futures exchange. Some futures contracts may call for physical delivery of the asset, while others are settled in cash.

A futures contract gives the holder the obligation to buy or sell, which differs from an options contract, which gives the holder the right, but not the obligation. As such, the owner of an options contract may exercise the contract. Both parties of a "futures contract" must fulfill the contract on the settlement date. The seller delivers the commodity to the buyer, or, if it is a cash-settled future, then cash is transferred from the futures trader who sustained a loss to the one who made a profit.

OPTIONS

Options are yet another type of promissory note. Options are financial instruments that convey the right, but not the obligation, to engage in a future transaction on some underlying security, or in a futures contract. In other words, the holder does not have to exercise this right, unlike a  future.

The theoretical value of an option can be determined by a variety of techniques. These models, which are developed by quantitative analysts, can also predict how the value of the option will change in the face of changing conditions. Hence, the risks associated with trading and owning options can be understood and managed with some degree of precision compared to some other investments.

Exchange-traded options form an important class of options which have standardized contract features and trade on public exchanges, facilitating trading among independent parties. Over-the-counter options are traded between private parties, often well-capitalized institutions, that have negotiated separate trading and clearing arrangements with each other. Another important class of options, particularly in the U.S., are employee stock options, which are awarded by a company to their employees as a form of incentive compensation.

Other types of options exist in many financial contracts, for example real estate options are often used to assemble large parcels of land, and prepayment options are usually included in mortgage loans. However, many of the valuation and risk management principles apply across all financial options.

In the next series, we look at the place of futures and options in the Kenyan financial services market .

Feel free to participate in this discussion

LAW & PROCEDURE FOR REGISTRATION OF TRADE MARKS IN KENYA

INTRODUCTION

In this advice, we highlight the law and procedure for registration of trade marks in Kenya.    

We emphasize on:   

     

                 (i)                  The legal requirement for application for registration of trademark;

                 (ii)                Registrability of a Logo;

                 (iii)              The process of filing a trade mark application in Kenya; and

                 (iv)               Registration Costs and Legal Fees.

In preparing this opinion, we have considered the following legislations and sources of law:

a)       The Trademarks Act, Chapter 506 of the Laws of Kenya.

b)       The Industrial Property Act, Act Number 3 of 2001;

c)       The Paris Convention for the Protection of Industrial Property; and

d)      Judicial precedents.

THE ADVICE

A trade mark or a service mark is a sign which distinguishes the commodities (goods or services) of an industrial or a commercial enterprise or a group of such enterprises from those of others.

The sign may consist of one or more distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours and so forth. The sign may consist also of combinations of any of these elements.

A trade mark or service mark can be a word, a symbol, a design, or a combination of these, applied for purposes of distinguishing the goods or services of one person or organization from those of others in the market place.

The Trademarks Act[1] describes a mark as a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.

REGISTRABILITY OF A LOGO

In order for a trade mark or a service mark to be registrable in Kenya, under the Trade Marks Act[2] it must contain or consist of at least one of the following essential particulars:-

1. The name of a company, individual or firm, represented in a special or particular manner;

2. The signature of the applicant for registration or some predecessor in his business;

3. An invented word or invented words;

4. A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname; and

5. Any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in paragraphs above, cannot be considered registrable except upon evidence of its distinctiveness.

"DISTINCTIVE" means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration and in relation to services means to distinguish services with the provision of which the proprietor is or may be connected in the course of business, from services the provision of which he is not so connected.

In determining whether a trade mark is adapted to distinguish, the Registrar of Trademarks considers the extent to which: -

1. the trade mark is inherently adapted to distinguish; and 

2. by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish.

3. A mark cannot be registered if it is likely to deceive or cause confusion or otherwise, or if it would be contrary to law or morality, or any scandalous design.

4. A mark cannot be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services. However, in case of honest concurrent use, or of other special circumstances which in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Registrar may think it right to impose. Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other, in respect of the same goods or description of goods or in respect of the same services or description of services, the Registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or on an appeal by the court, as the case may be.

A mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well known mark, is a mark which is well known in Kenya as being the mark of a person who:

1. is a national of a convention country; or

2. is domiciled in, or has a real and effective industrial or commercial establishment in, a convention country, whether or not that person carries on business or has any goodwill in Kenya.

The proprietor of a mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well known trade mark, is entitled to restrain by injunction, the use in Kenya of a mark which is identical or the essential part of which is identical or similar to his, in relation to identical or similar goods or services, where the use is likely to cause confusion among the users of the goods or services.

A mark cannot be registered if that mark, or an essential part thereof, is likely to impair, interfere with or take unfair advantage of the distinctive character of the well-known trade mark.

A mark may be limited in whole or in part to one or more specified colours.

If a trade mark is registered without limitation of colour, it is deemed to be registered for all colours.

DISCLAIMER

It suffices to demystify the concept of disclaimer and how it related to the trade mark registration process.

A disclaimer is a statement indicating that a certain word or portion of a mark is not protected. This means that it is possible to have in your mark parts or words that are generic or commonly used in the trade for those products with the understanding that you have no monopoly over it and thus no right to bar others from using those words. An example here would be Lamati Coconut Juice; the disclaimer would cover the words “coconut juice”. Having a disclaimer does not however mean that you can never use the disclaimed portion as part of your mark.  In your case, you may have a disclaimer on the words Coconut Juice to indicate that you do not bar others from using the words Coconut Juice.

If a mark contains any part not separately registered by the proprietor as a trade mark; or contains matter common to the trade or to the provision of services of that description or otherwise of a non-distinctive character, the Registrar, may require, as a condition of its being on the register- the proprietor to disclaim any right to the exclusive use of any part of the trade mark or to the exclusive use of all or any portion of any such matter, or that the proprietor to make such other disclaimer as the Registrar may consider necessary.

Therefore, whilst processing the application for protection the examiners in the Trademarks office at Kenya Industrial Property Institute (KIPI) may ask that the applicant disclaims the right to exclusive use of certain parts or words of the mark and in your case, they might require that you disclaim the right to exclusive use of the words corporate communications.

REGISTRATION PROCEDURE

A. 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 the prescribed form. 

A preliminary search is not mandatory but is advisable for the following two reasons: -

1. It aids the applicant in determining whether the application has a chance of success, or whether it would be a waste of time and money to try and register the mark in its present form.

2. It helps the applicant to avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.  

B. Applying for registration

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 should apply to the Registrar on the prescribed form accompanied by seven representations of the mark.

The applicant is required to file a separate application for each mark in each different class.

C. Examination

There are three stages in examination of a Trade Mark:

Formality examination: This involves close checking to find 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.  

D. Advertisement

If the examiner finds no grounds to refuse a trade or service mark application, then the mark is advertised in the Industrial Property Journal or Kenya gazette to allow any interested party an opportunity to raise objections to the pending application prior to registration.

The information included in the gazette 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.).

E. 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 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 may prefer an appeal to the High court.

F. Registration

If there is no opposition to the 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 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.

Multiclass applications: It is possible to file multiclass applications for registration of marks in Kenya.

NON-USE AND USE OF REGISTERED MARKS

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.

REGISTRATION COSTS AND LEGAL FEES

Basic Fees for Registration of Trade or Service Marks

The fee payable to KIPI is as follows: -

1.    Agent / authorization form – K.Shs. 1,000.

2.    Search fees and preliminary advice done by the Registrar of Trademarks – K.Shs. 3,000.

3.    Application fee for mark - K.Shs. 4,000.

4.    Registration fee (if the mark is accepted) – K.Shs. 2,000.

5.    Advertisement fees in Kenya Gazette -  K.Shs.  5,000.

Assuming the registration process proceeds with no amendment and without an objection the total fee payable to KIPI would be K.Shs. 15,000.

Agency costs incurred is often approximately Kshs. 15,000/=

Legal Fees and Costs

The legal fees for registration of trade marks in Kenya is governed by the Advocates Remuneration Order, 2006.

1. We expect that the expenses incidental to the registration process would be in the region of K.Shs. 20,000/- (these include:- Office Expenses such as file fees, correspondence, travelling to KIPI to conduct search, advertisement, telephone, printing and photocopying).

2. Assuming the registration process proceeds without any objection by a third party or litigation, we approximate the professional fees exclusive of taxes and disbursements and with at least five attendances at KIPI to be in the region of KShs. 50,000.00.

As such, costs including professional fees, disbursements and taxes would be approximately K.Shs. 93,000/= (made up of K.Shs. 50,000/= for legal fees; K.Shs. 8,000/= in respect of VAT; K.Shs. 20,000/= in respect of consequential disbursements; and K.Shs. 15,000/= towards statutory/governmental disbursements).

ESTIMATED TOTAL COSTS

Legal Fees                                           - Kshs. 50,000/=

VAT on Legal Fees                          - Kshs. 8,000/=

Office Expenses                               - Kshs. 20,000/=

KIPI Fees                                             - KShs. 15,000/=

TOTAL                                                - KSHS. 93,100/=

CONCLUSION

We hope you find this advice useful. However, for further enquiries any matter relating to registration of trademark, please contact us at stralexgroup@gmail.com.

Teddy OKELLO

Strategic Legal Solutions Group

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[1] Trademarks Act, Chapter 506 of the Laws of Kenya.