By: Loreen Kadzo

A trademark is a mark used to indicate that a particular person is connected with the provision of particular goods or services without necessarily indicating the identity of that person. Essentially, trademarks are intellectual property rights granted to distinguish the goods or services provided by one enterprise from those of another enterprise. Therefore, any distinctive word, symbol, sign, letter, numeral, drawing, picture, shape, color, logotype or label used to distinguish goods or services may be considered a trade mark.

The main purpose of trade mark is to protect innovators and traders in legitimate products, consumers and the industry and also protect against unfair competition and inequitable conduct in the market. The owner of a registered trademark is granted exclusive right to prevent all third parties not having the owner’s consent from using identical or similar signs for goods and services in the course of trade.

In Kenya the registration of trademarks is governed by the Trademarks Act, Chapter 506 of the Laws of Kenya. The body mandated with the registration of trademarks is the Kenya Industrial Property Institute (KIPI) which is established under section 3 of the Industrial Property Act. A trademark must be registrable for it to be registered this means that it must not be a prohibited mark, must not be likely to deceive or cause confusion, must not be any scandalous design and it must not be contrary to public order or morality.

Registration is divided into two broad categories: marks which are distinctive and those capable of distinguishing the products from others. A distinctive mark is one that stands out in identifying the product from all other products generally or one that stands out in identifying the product within a class of similar products. The Trade Mark Act provides for registration in Part A and Part B. Part A requires that the mark be distinctive. The registrar of trademarks has discretion in the case of Part B registration and may register a mark even if it is not distinctive as long as it distinguished the product from other products.

PROCEDURE FOR TRADEMARK REGISTRATION

Before applying for the registration of a trade mark, an applicant is advised to conduct a search (not mandatory) to find out whether the trademark is registrable or not and also whether there exists in the trademark register a similar trademark that would cause confusion to the consumers. An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent in form TM 27. The search although not mandatory would help one avoid trade mark infringement or potential lawsuits in case of conflicting trademarks.

A person wishing to register a trade mark for use ought to make an application to the registrar in form TM 2 accompanied by seven representations of the mark. Foreign applicants are required to file through an agent in the same form but the application should be accompanied by form TM 1 which is the form of authorization or the power of attorney duly completed and signed. The application should also be accompanied by form T 32 which provides for entry of the address of service in Kenya.

For a trademark to be registrable, it must contain at least one of the following essential particulars –

The name of a company, individual or firm represented in a special manner

• The signature of the applicant
• An invented word(s)
• A word(s) having no direct reference to the character or quality of the goods
• A trademark cannot be registered if it is identical with or near resembles a mark belonging to a different proprietor which is already on the register in respect of the same goods or services. Additionally, a trademark cannot be registered if it is likely to impair or interfere with or take unfair advantage of the distinctive character of a well-known trade mark.
• If a trademark contains any part not separately registered by the proprietor as a trademark or contains matters common to the trade or services, the registrar may require as a condition of it being on the register that the proprietor disclaim any right to the exclusive use of the part of the trademark.

Subject to the provisions of the Trade Marks Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments as he may think fit. In the case of refusal or conditional acceptance, the registrar shall if required by the applicant state in writing the grounds and reasons for his decision and the applicant shall be entitled to appeal the decision.

When an application for registration of a trademark has been accepted whether absolutely or conditional, the registrar shall cause the application to be advertised in the prescribed form for a period of 60 days.

Any person may within the prescribed time from the date of advertisement of application give written notice to the registrar of opposition to the registration and include a statement of the grounds of opposition.

The registrar shall then send a copy of the notice to the applicant who may send a counter statement of the grounds on which he relies for his application. Failure to send the counter statement is deemed to be an abandonment of the application.

The registrar shall then hear both parties and consider their evidence before making a determination on whether to proceed with registration of the trademark or not. The decision of the registrar is subject to appeal to the court.

Once the application for registration of a trademark in Part A or B has been accepted, the registrar shall register the trade mark and issue the applicant with a certificate of registration in the prescribed form.

The registration of a trademark shall be for a period of ten years subject to renewal on expiration of the original registration.

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