Registration and Enforcement of Trademarks Rights in Kenya

Do you have a brand name, logo or mark that you would like to protect from infringement by third parties? If so, you can secure exclusive user rights to that trademark and protect it from any unauthorized use. Protecting your brand’s name in today’s competitive market is more important than ever, and registering the trademark is a key step in securing your business’s identity. It’s not just about ticking a legal box—it’s about ensuring your exclusive rights to use your brand’s name, logo, or slogan, and leveraging these assets for growth. Governed by the Trade Marks Act, Cap. 506, the process of trademark registration in Kenya is designed to safeguard your intellectual property and open up for other lucrative opportunities such as licensing and franchising.

In this article, we’ll walk you through the essentials of trademark registration, including the criteria your trademark must meet, the steps involved in the registration process, and how the International (Nice) Classification of Goods and Services plays a role. We’ll also cover what to do if your trademark is challenged or infringed upon, ensuring you’re well-equipped to protect your brand. Whether you are a local business owner or operating from abroad, understanding this process can help you secure one of your most valuable business assets.

The International (Nice) Classification of Goods and Services (ICGS) for trademark registration was established in 1957 and revised in 1967 and 1977. Countries part of the Nice Agreement use this classification system, forming a Special Union within the Paris Union for the Protection of Industrial Property. Each member country must use the Nice Classification for registering marks and include classification numbers in official documents. The Nice Agreement divides trademarks into 45 classes (1 – 34 for goods, 35 – 45 for services) to specify and limit intellectual property rights and unify classification systems globally. In Kenya, the Act acknowledges the International Classification of Goods and Services (ICGS) under section 6, stating that goods and services for which trademark registration is sought must be classified according to the ICGS.

Registration

Registering a trademark in Kenya is typically a straightforward process. The Act allows applicants who reside outside of Kenya or have their principal place of business abroad to be represented by a trademark agent. Under the Act, a person is qualified to act as a trademark agent if they meet the following criteria:

• Is a Kenyan citizen; and
• Is an advocate of the High Court of Kenya; or
• Is admitted to practice as an agent before the Institute in accordance with the provisions of the Industrial Property Act (Cap. 509).

For a trademark (excluding certification marks) to be registrable in Kenya under the Act, it must include at least one of the following essential elements:

• The name of a company, individual, or firm presented in a special or unique way;
• The signature of the applicant or their business predecessor;
• An invented word or words;
• A word or words that do not directly refer to the nature or quality of the goods and are not commonly recognized as a geographical name or surname; and
• Any other distinctive mark.

Applications for registration of trademarks are made at the Kenya Industrial Property Institute (KIPI). The procedure is as follows:

• Applying for Preliminary Advice and Official Search (TM27) – This step allows KIPI to provide guidance on the proposed trademark’s availability and registrability, including any necessary disclaimers or clarifications. While not mandatory, an official search is advisable to prevent unexpected issues such as objections and additional costs.
• Application for Registration – After receiving the official search results from KIPI, one then submits an application for registration (substantive examination – TM2) along with a power of attorney and/or appointment of agent forms (TM1) authorizing the agent to act on behalf of the trademark proprietor.
• Substantive Examination and Advertisement – KIPI provides a report on the substantive examination, followed by an application for advertisement in the KIPI Journal, which runs for 60 days. If no challenges or oppositions are lodged during this period, KIPI issues a certificate of trademark registration.

Enforcement

Once the proposed trademark is advertised in the KIPI journal, any person can file an objection based on valid grounds. The objection is handled similarly to court proceedings, where both the applicant and the person objecting can present their claims, responses, and evidence to the Registrar of Trademarks for a decision. A binding ruling is then issued. If either party is dissatisfied with the Registrar’s decision, they can appeal to the High Court of Kenya and, if necessary, proceed further up the hierarchy of Kenyan courts.

If the decision from the opposition proceedings is in favor of the trademark applicant, the application will proceed to registration, and the certificate of trademark registration will be issued. A registered trademark is valid for ten years from the application date and can be renewed by the proprietor. The Registrar must notify the proprietor six months before the ten-year period expires to allow for renewal. If the renewal application is not submitted before the trademark expires, the Registrar may remove the trademark from the register. However, there is an option to apply for reinstatement of the trademark, with timely action being essential.

If you discover that your trademark has been infringed upon after another party has already registered it, don’t worry—you still have options. The Constitution of Kenya, under Article 40 (5), recognizes Intellectual Property Rights and obliges the State to support, promote, and protect these rights. Additionally, Article 23 (1) of the Constitution grants the High Court the authority to hear and determine cases involving the denial, violation, infringement, or threat to rights or fundamental freedoms in the Bill of Rights. Therefore, if your trademark is infringed, the law allows you to file a lawsuit at the High Court.

With the sound guidance and support from our experienced advocates, you can confidently navigate the complexities of trademark registration and enforcement in Kenya. Your brand is a valuable asset – make sure it’s well-protected.

At Andersen, we are dedicated to providing expert guidance tailored to your unique needs. If you have any questions or require further assistance on this topic, please reach out to our team via info@ke.andersen.com.

Download the article here.

By:

Mark Njoroge

Tax & Legal Associate at Andersen in Kenya

mark.njoroge@ke.andersen.com