Registering a trademark in Kenya

Registering a trademark in Kenya

Brands help you protect against intellectual property infringement and use of creative works by third parties.A trademark is generally defined as a name, drawing, picture, monogram or a combination of the mentioned. We offer reliable trademark registration services in Kenya.

Unregistered Trademarks

Common law recognizes unregistered marks under Section 5 of the Trademarks Act. In a passing-off action, the owner of the unregistered mark must prove that its mark has acquired sufficient reputation through use by the public.Unregistered trademarks are also protected under section 15A of the Trademarks Act upon sufficient proof of their reputation and well established status in Kenya. Well established trademarks require

Registered marks.

A trademark can be claimed by anyone. However, it is required that, before filing a trademark application, the owner should appoint an agent who is authorized to act for that purpose.

A mark must contain at least one of the following to be registrable.

  • The name of a company, individual or firm or agent represented in a particular manner.
  • The applicant’s signature.
  • An invented word or words

How to register a Trademark in Kenya.

To register a Trademark in Kenya you shall require the following.

  • The name of a company, individual or firm making the application.
  • The signature or seal of the applicant.
  • An invented word or invented words. Being the trademark name.
  • Any other distinctive mark.

Trademark registration procedure in kenya.

  1. Trademark Name Search. A preliminary Search is conducted 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 trademark. An application for a Name search is done by the applicant or his agent via Form TM27.
  2. Trademark Application. TM2. Upon the preliminary search approval by the registrar of Trademarks, an application is made to the Registrar on form TM 2, accompanied by seven (7) representations of the trademark Art work. Where the application for Trademark is done by an Agent of the applicant, The application shall include a Form TM1 – Form for appointment of agent. The application is accompanied by Form TM 32 – For entry of the address of service in Kenya.
  3. Examination of Trademark. The formal process of registration of a Trademark in Kenya commences with three stages of Examination. Formality examination – A scrutiny of the documents and purpose of the application if in order and legible for processing of the trademark. Search – a secondary search is conducted by the registrar of Trade marks to ascertain that there is no similar or closely resembling mark on the Register of Trade Marks in Kenya. Substantive Examination – The Mark and description are examined to ensure its distinctiveness and uniqueness.
  4. Upon successful examination and where the Registrar of Trademarks is satisfied that the application is proper, the application is advertised and published in the KIPI journal to allow interested parties to raise objections to the pending application if any. The advertisement is for 60 days.
  5. Registration. Where there is no objection in the mandatory 60 days after publication in the journal, the process of registration begins. The mark shall be registered as at the date of application for Registration.

Protection of a Trademark In Kenya.

A registered trade Mark is protected for a period of 10 years from the date of registration in Kenya. Six months prior to the expiry of the 10 years, the Registrar shall notify the Trade mark owners in writing of the impending expiry date.

Requirements for registration of a Trademark in Kenya.

  • Proposed Trade Mark name for name search approval.
  • Proposed Art Work and Trade mark description. In soft and Hard copy
  • Names of the applicant /s in Full.
  • Postal address for the Applicant.
  • Proposed Physical address of the Applicants. Address includes road, plot number, town, county / Country.
  • Copy of Registration certificates where applicants is a Business.

Who can register a trademark in Kenya.

The following are eligible to register a Trademark In Kenya as long as they meet the threshold of the Act.

  • Individuals.
  • Legal firms
  • Companies
  • cooperatives.
  • Society

The following information shall be required.

  • Name of the individual, firm, cooperative society or company making the application.
  • Nationality of the applicant. As this determines the cost.
  • representation of the proposed trade mark.
  • Contact information of the applicant. Postal address, email address, Telephone number and physical address.

Categories of of Trade Marks in Kenya.

Trademarks in Kenya are categorized in accordance to the international Classification of goods and services as provided for under the NICE protocol.A Trade Mark may be registered under any of the 45 Classes or a combination of any of the classes subject to the Nature of goods and services.

The following are generally excluded from registration.
  1. Marks whose use would be likely to deceive or cause confusion
  2. Marks that closely resemble registered trademarks and are proposed to be registered in respect of the goods or services covered under the prior similar registrations.
  3. Touch, scent, taste and sound marks.
  4. the words ‘patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’, ‘entered at Stationer’s Hall’, ‘to counterfeit this is a forgery’ or similar words.
  5. Representations of the head of state of any foreign state, or any colourable imitation thereof.
  6. The phrases ‘Red Cross’ or ‘Geneva Cross’ and representations of the Geneva and other crosses in red or the Swiss federal cross in white on a red background or silver on a red background, or such representations in a similar color or colors.
  7. Any specified emblems, likenesses and names under the National Flag, Emblems and Names Act (these may be registrable where the applicant obtains the written permission of the competent authority.
  8. Any honor, award, title or abbreviation of a title created by the president.
  9. Armorial bearings, insignia or flags of any foreign state or international intergovernmental organization.
  10. Any title or abbreviation of any international intergovernmental organization.
  11. Marks consisting of or containing the Olympic symbol. Marks consisting of or containing the symbols of the Pan African Games or other international sporting events. Trademark Registration for non-Financial services. A trademark application can be filed for services in which the applicant is not an actual business entity. The applicant must then take steps to transform themselves into a business entity. There are two main ways of transforming the non-business entity into a business entity. A business entity can apply for a trade mark for the services provided by the entity. The entity can transfer all assets of the service provider to a business entity and the business entity can apply for a trade mark on the new name. Trademark Registration for Financial services. Any person who desires to register a trade mark for provision of financial services is subject to registration of trade marks for the same type of services where the applicant is a business entity.