trademark registration in Kenya
Getting to own your own trade mark is very easy and fast in Kenya if you follow the laid down rules. Before the registration of a trade mark, the applicant should conduct a search 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 trade mark. An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on Form TM 27.
Importance of search before registration
- It will help one in determining whether the application has a chance for success,
- whether it would be a waste of time and money to try and register it in its present form.
- Helps avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.
A person claiming to be the proprietor of a trade mark, used or proposed to be used by him, and who is desirous of registering it should apply to the Registrar on form TM 2 accompanied by seven (7)representations
Foreign applicants are required to file through an agent and thus the application should be accompanied by the form of authorization Form TM 1 or the power of attorney duly completed and signed and must have a duty stamp affixed on it .
The application should also be accompanied by form TM 32 (for entry of the address of service in Kenya). The applicant is required to file a separate application for each mark in each different class.
In order for a trade mark (other than a certification trade mark) to be registrable, it must contain or consist of at least one of the following essential particulars-
- the name of a company, individual or firm, represented in a special or particular manner;
- the signature of the applicant or some predecessor in his business;
- an invented word or invented words;
- a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
“distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration and in relation to services means to distinguish services with the provision of which the proprietor is or may be connected in the course of business,
Prohibition of registration of deceptive marks, matter
A trade mark cannot be registered if it is likely to deceive or cause confusion or otherwise, or if it would be contrary to law or morality, or any scandalous design.
Prohibition of registration of identical and resembling trademarks
A trade mark cannot 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 description of services.
In case of honest concurrent use, or of other special circumstances which in the opinion of the Registrar, make it proper so to do, 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 Registrar may think it right to impose.
Protection of well-known trademarks
A trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trade mark, is a mark which is well known in Kenya as being the mark of a person
The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trade mark, is entitled to restrain by injunction, the use in Kenya of a trade mark which is identical or the essential part of which is identical or similar to his, in relation to identical or similar goods or services, where the use is likely to cause confusion among the users of the goods or services.
A trade mark cannot be registered if that trade mark, or an essential part thereof, is likely to impair, interfere with or take unfair advantage of the distinctive character of the well-known trade mark.
Registration of a trade mark subject to disclaimer
If a trade mark contains any part not separately registered by the proprietor as a trade mark; or contains matter common to the trade or to the provision of services of that description or otherwise of a non-distinctive character, the Registrar , may require, as a condition of its being on the register- the proprietor to disclaim any right to the exclusive use of any part of the trade mark or to the exclusive use of all or any portion of any such matter, or that the proprietor to make such other disclaimer as the registrar may consider necessary. A word which is a commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, cannot be registered as a trade mark in respect of a chemical substance or preparation.
limitation as to color, and of absence thereof
A trade mark may be limited in whole or in part to one or more specified colors, if a trade mark is registered without limitation of color, it is deemed to be registered for all colors.
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