What is a Trademark?
A trademark, trade mark, or trade-mark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. (Wikipedia)
Trademark Registration Procedure
Preliminary Search
Before applying for the registration of a trade mark, an 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 of Kenya Industrial Property Institute (KIPI) should be made by the prospecting proprietor or his agent on Form TM 27 to Kenya Industrial Property Institute (KIPI). Search is not mandatory but is advisable for the following two reasons; It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in it’s present form.
It will also help one avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.
Requirements of a registrable trademark.
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;
- any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in paragraphs (1), (2), (3) and (4) above , cannot be considered registrable except upon evidence of its distinctiveness.
Requirements for Registration of a Trademark in Kenya
- proposed trade mark name for name search approval.
- Proposed Art Work and Trade mark description.
- 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. - Copy of Registration certificates where applicants is a Business.
Applying for Trademark 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 of Kenya Industrial Property Institute (KIPI) on form TM 2 accompanied by seven (7)representations of the mark.
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.
Prohibition of a trade mark in Kenya.
• 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 trade marks
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.
• Protection of well-known trade marks
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 who-
- is a national of a convention country; or
- is domiciled in, or has a real and effective industrial or commercial establishment in, a convention country, whether or not that person carries on business or has any goodwill in Kenya.
- 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.
