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Trademark

TRADEMARKS REGISTRATION IN KENYA

Trademarks are a vital classification of intellectual property bestowing on the registered proprietor exclusive commercial rights to exploit the trademark.

The registration of trademarks is regulated by the Trade Marks Act CAP 506 of the Laws of Kenya. A trade mark has been defined under the Act to mean “a mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as a proprietor or as a registered user to use the mark, whether with or without any indication of the identity of that person.”

The law under section 4 of the Trade Marks Act requires the Registrar of Trade Marks to maintain a Register of trade marks containing the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all licensees, disclaimers, conditions, limitations, and such other matters relating to trade marks.

Trademark Registration Process in Kenya

Can an action be initiated for the infringement of an unregistered trade mark?
Essentially, no action may be initiated for the infringement of an unregistered trade mark. This is reflected in Section 5 of the Trade Mark Act. The provision provides that no person shall be entitled to institute any proceedings to prevent, or to recover damages for the infringement of an unregistered trade mark.

The provision however contains a proviso that permits persons to make applications for infringement of an unregistered Trade Mark, where it may be demonstrated that the alleged ‘infringer’ is passing off the unregistered Trade Mark. The case of British United Provident Association v Bupa (Kenya) Ltd [2006] eKLR is illustrative of this.

How to oppose the registration of a trade mark
Once an application for trademark is accepted, the Registrar ensures the application is advertised setting out all the conditions that led to the acceptance of the application. Once it is advertised, any person is at liberty to give a notice of opposition to the Registrar in writing under section 21 of the Trade Mark Act. The notice ought to include a statement of the grounds of opposition. Under Rule 46 of the Trade Mark Rules, this opposition ought to be made within sixty days from the date the application for trademark registration is advertised.

After the notice is given, the Registrar sends the notice to the applicant. Upon receiving the notice, the applicant is expected to send a counter-statement of the grounds on which he relies for his application.

The Registrar proceeds to hear both the applicant who submitted the counter-statement and opposing party who submitted the notice of opposition. He considers the evidence and then decides whether to permit the registration. This decision of the Registrar can only be appealed to the High Court.

The High Court has power to hear the parties and the Registrar and make a determination, setting out whether the registration may be permitted, and under what conditions. During the hearing, both parties are allowed to bring material for consideration by the court by following the required procedure or by special leave of court.

REGISTRATION OF A TRADEMARK OR BRAND IN KENYA

If the applicant fails to send a counter-statement, it is assumed that the applicant has abandoned his application.

Revocation for non-use of a trade mark by a registered proprietor
Non-use of a Trade Mark is ground for removal/revocation of a Trade Mark. This is explicitly set out in section 29 of the Trade Mark Act. The application for removal of a Trade Mark from the register may be made to court by any person aggrieved or, at the option of the applicant on grounds that:

1. The trade mark was registered without any bona fide intention on the part of the applicant to use the Trade Mark, in relation to those goods; and

2. The non-use of the Trade Mark has been prevalent up to the period, not less than one month prior to the date the application for removal of the Trade Mark was made; or

3. The Trade Mark has been registered for a continuous period of five years or more. During this period extending to the one month preceding the application for removal, the owner of the Trade Mark has made no bona fide use of the Trade Mark.

The concept of the bona fide use of a mark by a bona fide user is a prominent concept in trade mark. In this regard, the High Court in ABSA Kenya Limited v Barclays Bank of Kenya (2020) eKLR cited with approval the definition of a bona fide user as elaborated by the Supreme Court of Appeal of South Africa in Westminister Tobacco (Pty) Ltd v Philip Morris Products S.A. and other (925/2015) [2017] ZASCA 10; [2017] 2 All SA 389 (SCA) (16 March 2017). A bona fide user means a user by the proprietor of his registered trade mark in connection with the particular goods in respect of which the object or intention primarily of protecting, facilitating and furthering his trading in such goods and not for some other, ulterior object. The court went further to state that when assessing whether the use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of the use of the mark.

Genuine use of a trademark thus means that it is use which is not merely token, serving solely to preserve the rights conferred by the mark. Its use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him without any possibility of confusion, to distinguish the product or service from others which have another origin.

Kenyans as a society are quickly recognizing the importance of safeguarding their intellectual property and in so doing protecting themselves from economic losses and potential damage to brand reputation.

“The information provided in this article is intended for general legal advice and does not constitute legal advice for specific transaction or case. Since each transaction presents a unique legal context, it is advisable to retain a legal adviser for specific transactions.” Contact CR Advoavtes LLP for Intellectual Property Law Firm.

To contact us, send us an email on info@cradvocatesllp.com or call +254 100979081 or Book a strategy call HERE or direct message us HERE on WhatsApp at your convenience. Our legal team will be happy to help you.

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