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.
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 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 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.
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.
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.
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.
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.).
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.
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/=