Trade and Service Marks
– Trade Marks Act, Chapter 506 of the Laws of Kenya (Revised Edition 2012).
– Trade Marks Rules, 1956 (Revised Edition 2012).
– Trade Marks (International Registration) Rules, 2003 (Revised Edition 2012).
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 14, 1965.
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 5, 1971.
– Nairobi Treaty on the Protection of the Olympic Symbol, since September 25, 1982.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Madrid Agreement Concerning the International Registration of Marks, since June 26, 1998.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since June 26, 1998.
Applicant: any individual, company, firm or other lawful association claiming to be proprietor or an assignee of a trademark may apply.
Foreigners and nationals not living in the country: no distinction is made either between them or the nationals living within the country; all are protected in the same manner. Foreigners should have an address for service in the country.
Novelty: not necessary; the first user establishes the right to the trademark, but the mark must not resemble or be similar to another on the Register.
Registrability: the mark must be distinctive. It can be the name of a company, individual or firm, presented in a special or particular manner, the signature of the applicant for registration or some predecessor in his business, an invented word(s), word(s) having no direct reference to the character or quality of goods, and not being according to its ordinary signification, a geographical name or a surname.
Excluded from registration: emblem, likeness or words specified under the National Flag, Emblems and Names Act; any honor, award or title or abbreviation thereof created by the President of Kenya; any armorial bearings, insignia; flag of any foreign state or international intergovernmental organization or any honor, award or title or abbreviation of title of any foreign state or international intergovernmental organization.
Service marks: registrable.
Collective (certification) marks: registrable.
Series of marks: accepted.
Defensive marks: allowed.
Well-known marks: protected.
Priority: may be claimed under International Convention within six months of original filing.
Classification of goods: as per the 12th Edition of the Nice International Classification.
Multi-class filing: allowed.
Territory covered: Kenya.
Filing requirements for an application:
1. The mark (word mark or label) and the list of goods or services for which the mark should be protected;
2. 10 “camera-ready” prints of the mark (for labels only); these can be made locally from specimens/electronic prints;
3. Power of attorney, if the applicant is represented by an agent, simply signed;
4. For foreign applicants, U.S.$ 200 for application to register a trademark in the first class and U.S.$ 150 for each subsequent class, registration fees of U.S.$ 150 for the first class and U.S.$ 100 for each subsequent class respectively. Advertisement fees are U.S.$ 60 for the first class and U.S.$ 50 for each subsequent class. Power of attorney fee is U.S.$ 50 per mark irrespective of the number of classes.
Note: there is no requirement for an agent for an applicant whose ordinary residence or principal place of business is in Kenya. However, for an applicant whose residence or place of business is outside Kenya, the applicant must be represented by an agent.
Electronic filing: not available.
Electronic signatures: both wet and electronic signature are accepted. However, it must be valid advanced electronic signature i.e. an advanced electronic signature issued by a Certification Service Provider (CSP) who is duly licensed by the Communications Authority of Kenya.
Examination: strict examination as to registrability and comparison with registered marks and pending applications.
Objections by Registrar: are notified by official letter; must be responded to within ninety days. Objections based on prior registration may be overcome by letter of consent by previous proprietor, if marks and/or goods are sufficiently dissimilar, but at the Registrar’s discretion. A letter of consent must be in original, signed and stamped. Notarization/legalization is not required.
Amendments: provided for.
Disputes about ownership: are settled by Registrar or by the court or settled by agreement between the parties with approval of the Registrar.
Secrecy of pending applications: not provided for.
Publication: after acceptance trademarks are advertised in the Kenya Industrial Property Journal.
Opposition: any opposition to the registration of a trademark must be filed within sixty days of the date of advertisement but extensions to this period are, at the discretion of the Registrar, readily obtainable subject to a maximum of ninety days in aggregate.
Appeal: an appeal to the decision of the Registrar lies with the High Court of Kenya.
Urgent examination and registration: not provided for.
Delivery of registration certificate: normally six to twelve months after filing, in paper format.
Duration: ten years from date of filing.
Correction of registration: possible.
Renewal: for periods of ten years each thereafter; by filing the prescribed form and payment of prescribed fee within three months prior to expiry date of current period. Grace period: up to one month after advertisement of intention to remove the mark for non-renewal.
Rights of owner: he has exclusive right to use the mark.
Obligation to use: if not used for a continuous period of five years and one month, a mark may be removed from the Register.
Licenses: may be granted and for the licensee to be registered as user particulars of the license must be furnished to the Registrar.
Assignment: possible, with or without goodwill of the business.
Modification of the mark: possible, if not substantially affecting the identity of the mark. The list of goods may be changed.
Marking of registered goods: not compulsory.
Text of marking: letter R enclosed in a circle means registered trademark.
Registration subject to disclaimer: where a trademark contains any part not separately registered by the proprietor as a trademark; or matter common to the trade or to the provision of services of that description or otherwise of non-distinctive character the Registrar may require as a condition for registration the proprietor disclaiming the exclusive use of any part thereof.
Modification of Protection after Registration
Opposition against registered trademark: not provided for, but removal from the Register possible.
Expungement: upon the registration of a trademark, an aggrieved party may file expungement proceedings with the Registrar for the removal of the registered trademark from the Register. An appeal against the decision of the Registrar lies with the High Court of Kenya.
Nullification: a trademark may be removed on grounds of non-use or non-compliance with a condition on the Register in respect of the mark.
Compulsory licenses: none.
Validation, registration of invalidated marks: not provided for.