All The Information You Need To Know: Trademark Law in Kenya
Madrid Protocol member: Yes, Kenya is a member state of the Madrid System.
Paris Convention signatory: Yes, Kenya is a signatory to the Paris Convention.
ARIPO member: Yes, Kenya is a member state of the ARIPO system.
OAPI member: No, Kenya is not a member state of the OAPI system.
Renewal term: Kenyan trademarks are due for renewal every ten years.
Non-use period: Registered trademarks in Kenya may become liable for cancellation on the grounds of non-use in Kenya if there has been no bona fide use in Kenya for a continuous period of five (5) years or longer after its registration, and up to one month before the date of the application for cancellation on these grounds.
Opposition period: The opposition period for trademark applications in Kenya is 60 days.
First-to-file jurisdiction: No, Kenya is a file-to-use jurisdiction.
Priority claim: Yes, applicants may claim priority in Kenya within six months of filing a trademark application in its initial jurisdiction, provided this jurisdiction is also a signatory to the Paris Convention.
Application-to-Registration term: The period from filing a trademark application to granting registered trademark rights in Kenya is approximately 7–9 months.
Power of Attorney: Trademark applications in Kenya require a signed Power of Attorney document to be successfully filed by an agent firm on behalf of a foreign applicant.
Would you like to continue your education on African trademark prosecution? If the answer is yes, keep reading to learn more about the legal landscape relating to trademarks in Kenya.
To kick things off, we will discuss the trademark registration and prosecution landscape in The Pride of Africa, Kenya.
Kenya is a vibrant gem in East Africa, teeming with opportunity and rich cultural heritage. With its dynamic economy fueled by innovation and entrepreneurship, the nation is a hotbed for investment, especially in sectors like technology, the financial sector, agriculture, and tourism. Picture yourself exploring the breathtakingly lush landscapes of the Kenyan Highlands, from the majestic Maasai Mara to the stunning beaches of the Indian Ocean, while immersing yourself in the warmth and hospitality of its diverse communities. Kenya’s rich traditions and cultures offer a unique tapestry of experiences that inspire creativity and foster collaboration. Whether you’re looking to invest, explore, or connect, Kenya has something special for everyone!
Let's begin our discussion on trademark prosecution in Kenya. Who can apply to obtain trademark rights in Kenya? Both Kenyan citizens and foreign individuals and businesses are eligible to register trademark rights in Kenya. There is, however, one caveat for foreign entities: they must enlist the assistance of a local Kenyan agent law firm to complete the application on their behalf.
Kenya is a member state of two IP registration systems: the international Madrid System administered by WIPO and the regional ARIPO system. While Kenya is a member of the regional ARIPO system, the nation has not assented to the Banjul Protocol on Marks, so it is not currently practically possible to register trademark rights in Kenya via the ARIPO system.
Today, we will be focusing on national trademark registration in our discussion. Trademark law in Kenya is governed by the Trade'Marks Act (Cap 506). This Act sets out a framework for the procedures surrounding the registration, protection and enforcement of trademark rights in Kenya while defining the requirements and scope of trademark rights in the market.
National trademark applications in Kenya are processed by KIPI (Kenya Industrial Property Institute). A wide variety of trademarks comprising a range of components are eligible for registration in Kenya, provided each mark is distinctive. For example, word marks, product marks logos, colour marks, drawings or images, tickets, names, signatures, labels, certification and service marks, well-known marks, graphically represented sound marks, monograms, slogans, and any combination of these marks may be registered in Kenya subject to the satisfaction of other key requirements by law.
Common Law Trademark Rights in Kenya
Per Kenyan legislation, trademarks in Kenya enjoy limited common law trademark rights. This means unregistered trademarks and well-known marks can be defended against infringement using common law principles such as passing off. While this may be the case, registered trademark rights remain the gold standard of trademark protection in Kenya.
Trademark Registration & Application Process in Kenya
Trademark registration in Kenya begins with submitting a completed TM2 trademark application form, seven representations of the trademark, a list of goods and services to which the mark will apply and a certified copy of the priority document, if applicable, to KIPI for review.
If an applicant is using an attorney to file this application on their behalf, this application bundle must also be accompanied by a duty-stamped TM1 Power of Attorney form that has been signed by the applicant, an application letter stating the full name, nationality, address of the applicant and proof of incorporation if the applicant is a company, in addition to a TM32 Form that designates the agent firm as the address for service for the trademark application.
Kenya is a multiclass jurisdiction, meaning applicants may designate several of the 45 Nice classes in a single trademark application. However, each different trademark will require a separate application. For example, if you would like to register the logo mark and word mark of your brand, you will need to submit individual applications for each category or form of trademark.
Once KIPI has received the trademark application, it will proceed to examination, which usually is concluded within 3–4 months. During this stage, the mark will undergo a formal and substantive examination. The formal examination stage ensures that the procedural aspects of the application comply with legislated requirements. The substantive examination stage ensures that the mark is distinctive and does not infringe on other registered trademark rights, nor fall into prohibited categories of trademarks in Kenya. A few examples of trademarks that are ineligible to be registered in Kenya are marks that are contrary to the good morals of society, contain flags or national insignia, sound, taste and scent marks, or contain the words "registered" or "patented", among many others.
Once KIPI has completed this examination, it will hand down its decision on the eligibility of the trademark application to proceed in the trademark application process. An application will either be approved, or rejected. If any remediable issues arise with the application, KIPI will provide the applicant with an examination report detailing any present flaws with the application. Should an application be denied, the applicant has two options: to abandon the trademark application or lodge a formal appeal with KIPI to dispute its findings. It is wise to follow the guidance of a trademark attorney in this instance. Conversely, a trademark application accepted by KIPI following examination will proceed to the advertisement or publication stage of the registration process.
During the advertisement, the mark is published in the monthly KIPI Journal for two months (60 days). During this period, interested parties may lodge opposition applications with KIPI to block the registration of the trademark on specific grounds. If the mark becomes a party to opposition proceedings, the registration of the mark is suspended until KIPI hands down a decision regarding the merits of the opposition application. Should registration of the mark be challenged, the applicant may formally respond to the interested party's grounds for opposition before a formal opposition hearing is held by KIPI. Based on its decision during these opposition proceedings, KIPI may either refuse registration of the mark, allow registration subject to certain disclaimers, or dismiss the opposition and allow registration of the mark.
Once the mark emerges from publication unchallenged or is deemed successful during opposition proceedings, the application will proceed to registration. KIPI will then enter the trademark into the Trademark Registry as registered, and issue the applicant a registration number and a certificate of registration within a reasonable timeframe. The date of trademark registration in Kenya is backdated to the application date, thus providing applicants with retrospectively registered trademark rights.
Trademark Assignment in Kenya
Much like in other markets, the assignment of trademark rights in Kenya is achieved by submitting a deed of assignment to the Kenyan Trademarks Registry. This deed of assignment requires certain information: the names of the assignor and assignee, specification and registration details of the trademarks set for transfer, the effective date of assignment and inclusion of any conditions related to monetary or non-monetary compensation or duties related to the transfer. This document must be completed and signed by each party (or their legal representatives in Kenya). It is not mandatory for the signing of this document to be attested to by witnesses. This document, along with the requisite official fees and a TM14 Form whereby the assignor submits their official request to register the assignment of their Kenyan trademark rights, must be submitted to the Registrar of Trademarks for processing on the Kenyan Trademarks Register.
That concludes our discussion on trademark prosecution in the fascinating nation of Kenya! Do you have any further questions regarding the nuances of trademark law in this market? No problem, feel free to pop IP Prosecutions team at info@debeerattorneys.com and we will be in contact with you as soon as we can.
PS: If you would like to explore previous instalments of this series that discuss trademark prosecution in other African markets, no problem! Simply click the relevant link below to access the information that you'd like:
Totsiens and sala kakuhle!
This information was last updated on 23 October 2024. This information is for general educational and entertainment purposes and is subject to change at any time.
Comentários