Trademarks Filing and Prosecution Kenya

A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Kenya IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.

In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Kenya IP Office. In Kenya, trademark protection is granted according to the provisions of Trade Marks Act (Chapter 506, as amended up to Act No. 7 of 2007), Kenya.

Trademark in Kenya may be designated by the following symbols:

• ® (for a registered trademark)
• ™ (for an unregistered trademark)

A trademark typically consists of a name, word, phrase, logo, symbol, design, image, or a combination of these elements. In addition to conventional trademarks, Kenya also allows the registration of non-traditional trademarks, which may include marks based on colour, smell, or sound.

A registered trademark grants the owner exclusive rights to use it in relation to the registered goods or services, or to authorize another party to use it in exchange for payment. Trademark protection helps prevent unfair competition, such as counterfeiting, by prohibiting others from using similar or identical marks to market inferior or unrelated products or services.

The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.

Trademark searches in Kenya

A trademark search in Kenya can be conducted for both word and device marks. It is advisable to carry out a search prior to filing a trademark application to determine the availability of the mark and to identify any prior identical or similar trademarks on the register. This helps to avoid objections or oppositions during the registration process.

Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Kenya.  

Filing trademark applications in Kenya

A person may file multi-class or single class trademark application in Kenya.

 Trademark application can be filed in the following categories:

• Ordinary Applications
• Convention application (claiming priority from a convention country)

Ordinary application in Kenya

Ordinary trademark applications filed in Kenya are applications without claiming any priority. Multi class trademark applications may also be filed in Kenya. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country. 

Priority trademark applications in Kenya /Convention trademark applications Kenya:

A priority trademark application may be filed in Kenya. A priority trademark application should be filed in Kenya within 6 months after the date on which the application was made in the convention country.

Paris convention

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Kenya within six months after the date on which the application was made in the Convention Countries.

Trademark classes for goods and services

Kenya follows the nice classification of classes. Intellectual property office of Kenya uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.

Trademark Examination in Kenya

Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal. 

Section 14 of the trademarks act deals with Prohibition of registration of deceptive, etc., matter

• No person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design

Section 15 of the trademarks act deals with prohibition of registration of identical and resembling trade marks

(1) Subject to the provisions of subsection (2), no trade mark shall 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.

(2) In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar make it proper so to do, the court or 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 court or the Registrar may think it right to impose.

(3) 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.

Trademark Opposition in Kenya

Any interested person, within 60 days from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark. Please note that the deadline can be extended up to 90 days.

Trademark registration in Kenya

After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.

Trademark Renewal in Kenya

You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.