What are trademarks?
A trademark is a distinctive sign/ indicator used or intended by an individual,
business organization, or legal entity to identify and distinguish its goods or
services from others.
A mark can include a distinguishing guise, slogan, device, brand, heading,
label, ticket, name, signature, word, letter, or numeral as per section 2 of the
Trade Marks Act Cap 506.
The Trademarks Act Cap 506 governs trademark registration in Kenya, and
the regulatory body overseeing this is the Kenya Industrial Property
Institute (KIPI).
Advantages of Trademark Registration to a Business.
● Maintaining a Brand’s/Business Identity: A registered Trademark
creates a unique identity of a business from others, helping to build
consumer trust and avoid confusion and counterfeits.
● Legal Protection: Registration of trademarks confers the proprietor or
licensee, in this scenario, the business, the exclusive rights to use the
mark in relation to the goods or services for which it was registered.
● Business Expansion: A trademark allows businesses to venture into
new markets while maintaining brand consistency and reputation.
● Prevention of Infringement: A registered Trademark serves as a public
notice of the ownership, discouraging competitors from using the same
mark.
Process of registering a Trademark
- Preliminary Search
One must search whether an identical or similar mark exists to those that
exist. The search is conducted at KIPI, and it is advisable to prevent potential
conflicts that will be detrimental to a business. - Application for Registration
Upon completion of the preliminary search, one fills in an application form
known as Form TM2: Application for Registration of a Trade Mark. The
application is done together with the payment of registration fees at KIPI.
Elements of the Application:
● Applicant’s Name & Address – The individual or entity registering the
trademark.
● Trademark Representation – A clear depiction of the mark (logo, word,
symbol, or combination).
● Goods/Services List – Items categorized under the Nice Classification
system.
● Class of Registration – One or more of the 45 international classes
for goods and services.
● Declaration of Use – A statement confirming the applicant’s intent to
use the trademark in Kenya.
Furthermore, the proposed trademark must include at least one of the
following:
❖ A company, individual, or firm name in a distinctive style.
❖ The applicant’s or predecessor’s signature.
❖ An invented word or words.
❖ A word with no direct reference to the goods’ character or quality, and
not a common geographical name or surname.
❖ Any other distinctive mark, provided its distinctiveness can be proven, if
it does not fall under the above categories.
- Examination by the Registrar
First, KIPI conducts a formal examination to verify that the application meets
all legal requirements, and thereafter, a substantive examination is done to
determine the distinctiveness of the trademark and its eligibility for
registration. If approved, the application moves to the next stage, but if issues
arise, KIPI may issue an office action, requiring the applicant to address
specific concerns. - Advertisement.
After passing the examination stage, the trademark is published in the KIPI
Journal. This serves to notify the public, allowing them an opportunity to
challenge the registration of the trademark. The notice period lasts for sixty
(60) days, and if there is no opposition, it proceeds to the next stage. However,
if any opposition arises, an application must be made within sixty days from
the date of publication by filing a Statement of Opposition. Once that is
determined and the application is unsuccessful, the trademark proceeds to the
next stage.
- Registration
If there is no opposition to the Trademark after the statutory sixty (60) day
period from the date of advertisement, or if an opposition has been
unsuccessful, the application will be registered and KIPI will issue a Certificate
of Registration under Form 10a and enter the registration in the Trade Marks
Register.
Section 23 of the Trademarks Act states that trademark protection lasts for 10
years, subject to renewal. It is also worth noting that trademarks are
jurisdiction-specific, meaning that their protection is generally limited to the
country or region where they are registered. An example is that a trademark
registered under KIPI in Kenya is not automatically protected in other
countries like Tanzania, Uganda and the like.
How We Can Help
At Prof. Tom Ojienda & Associates, we are committed to providing expert legal
insights and guidance across various practice areas. Whether you are an
individual seeking legal redress or an organization navigating complex
regulatory frameworks, our experienced team is here to support you. Our
articles and insights are for informational purposes only and do not constitute
legal advice. For tailored legal solutions, please contact our team of
professionals at www.proftomojiendaandassociates.com to Stay Ahead of the
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