Q. What is a Trademark?
A trademark is a sign or symbol that is used to identify a good or service offered by persons or firms. Sounds and even a particular odour could in theory be a trade mark if an appropriate means could be found to represent it graphically.
A word that is descriptive of the goods or services would not be capable of distinguishing and would not qualify for registration. An example of a descriptive mark is ‘MOVIE MAGAZINE’ for movies. This cannot be registered as a trademark, because the word ‘movie’ is a commonly used word in the English language and cannot be used to distinguish the source of the product or service.
Examples of invented words include PUMA or KODAK.
Q. What are the requirements that a mark must have for it to be registered as a trademark in Kenya?
A Specially represented name of a company, individual or firm;
The signature of the applicant for registration 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 surname;
Any other distinctive mark.
Q. What is the procedure for the registration of a Trademark in Kenya?
Preliminary search
A search should be conducted before applying for registration to find out if the Trade mark can be registered or not. This is a necessary precaution before proceeding with the registration process to avoid spending time and money on an application that will be refused. The relevant form is Form TM 27 and the fee is KSh 3000.
Application for registration of Trademark
Once the preliminary search is done and one is satisfied that the mark can be registered, one can apply for registration. This is done in form of Form TM 2 and TM 32. Form TM2 should be accompanied by 7 representations of the mark.
For foreign companies to register their Trade marks in Kenya, they must appoint an agent in Kenya and as such they will in addition to Form TM 2 and TM 32 require Form TM 1 for appointment of agent. The application fee is KSh 4000.
Examination stage
The Registrar examines the application to ensure the correct documents have been filed and that the mark does not resemble any registered Trade mark. This is done at a fee of Ksh.3000. An examination report is then issued, the report informs one whether their mark has been approved for registration.
Advertisement stage
Once the Registrar approves the mark for registration, the mark is advertised in the Kenya Industrial Property Institute (KIPI) journal for 60 days to allow any person opposed to the registration of your mark to raise their objection. If no opposition is raised, it proceeds to registration. If an opposition is raised, a notice of opposition in the form of Form TM 6 is filed and opposition proceedings begin.
Registration
This is the final stage in the registration process, if no opposition is raised upon advertisement, the application will be registered and a certificate of registration of the Trademark is issued. Registration costs KSh 2,000.
1. Form TM 27 - Application for search/Application for preliminary advice as to distinctiveness.
2. Form TM 2 – Application for registration of Trade mark.
3. Form TM 32 – Application to enter or alter address of service
4. Form TM 1 – Form of authorization of agent
Q. Why register a trade mark?
It is important to note that the registration of a trademark is not compulsory and using a mark for a certain period of time can establish ownership through Common- law especially if it is a well-known mark. An example of a well-known mark is the Coca-Cola symbol. What makes it a well-known mark is the fact that it has been around for a long period of time and a majority of the people can identify with it.
However, it is still important to register a trade mark because;
It guarantees the owner the exclusive right to the use and benefits of the trademark.
It protects the owner from being involved in litigation which is expensive and time consuming.
Trademarks are now used as capital assets in many businesses therefore a registered trade mark can be commercialised through licensing agreements such as franchising.
Registered trademarks are protected for a period of 10 years which may be extended upon renewal.
Q. When does one use the symbols TM, SM and ®?
The ‘TM’ symbol may be used with registered and unregistered trademarks, the® symbol may be used only when the trademark has been registered. It is an offence to show that a trade mark has been registered when in fact it has not.
‘SM’ denotes ‘service mark’ and is used to label services and may also be used prior to registration.
Q. Is a trademark, once registered, protected in more than one country?
Trademarks are territorial, and the rights are only protected in the territories it has been registered. For example, registering a mark in Kenya does not automatically guarantee one’s rights to the trademark in another country. Companies like Samsung or Apple are advised to register their trademarks in all the regions they sell their products.
However, it is possible for one to register their trademark through a centralised intellectual property registration office system. This allows for one to file only one trademark application and once accepted, the trade mark will be protected in a number of countries. An example is The African Regional Industrial Property Organisation (ARIPO) which covers English- speaking African countries such as Kenya, Uganda, Tanzania, Zambia, Zimbabwe and other countries.
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Anne Warigia Mburu
Intellectual Property Division
Strathmore Law Clinic
Copyright © Anne Warigia Mburu 2018
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