Trademark registration in Kenya
Trademarks are a type of intellectual property. They operate as a ‘badge of origin’, immediately alerting consumers that the goods or services in question originate from the trade mark owner.
Despite their intangibility, they are powerful rights, playing a significant role in brand development, recognition, commercialisation and protection. An easily recognisable, trusted brand has an immediate advantage over its competitors, and, for some businesses, the intrinsic value of its trade mark can surpass that of all other assets.
In this guide, we explain the steps you will need to take to register a trade mark in Kenya and the available options to you if someone opposes your trade mark application.
When is the best time to register a trade mark?
Ideally, you will register your trade mark as soon as possible, once you have set up your business and before you start, to protect your brand and prevent others from using it without permission. Delaying registration could leave your brand vulnerable to infringement by others. It is also likely to be more costly to your business if you discover a conflict after you have already commenced trading and built up goodwill in your mark, and then find that you must restrict your activities under the brand or even rebrand entirely.
It is not always possible to register your mark immediately, and you may not have been aware of the need to register your mark until a potential conflict appears on the horizon.
If your brand is constantly evolving or you are unsure about its long-term viability, it may be prudent to delay your registration, but you should discuss this with trade mark registration experts to decide upon the best strategy for your business.
What are the benefits of trade mark registration?
By registering your brand name and other identifying features as trademarks, you secure a monopoly over the use of those marks in connection with the goods or services for which they are registered. A registered trade mark can be commercialised in the same way as tangible assets, through licence, sale or mortgage, and can be relied on to prevent third parties from copying your brand.
Who will own the trade mark?
Any natural or legal person can be a registered trade mark owner. A trade mark can be held jointly by several people or entities.
It may seem insignificant, but deciding who will be registered as the owner of your trade mark is an important decision and one which should be given careful consideration. Trademarks are vulnerable to cancellation for non-use on the part of the trade mark owner. If the trade mark is examined for non-use cancellation, the use by an entity different to the registered owner may be disregarded, even if the entities are linked. So, if you own multiple businesses, it is important to make sure the trade mark is registered in the name of the one likely to use it first, and most.
Our trade mark experts will assist you in identifying the most appropriate registered owner of your trade mark, and consider whether any additional documentation, such as intra-company licences, might be required to fully protect your position.
How do I register a trade mark in Kenya?
You may think that the first step is to fill in and submit the application form and pay the application fee. You could do this, but this is a risky approach. It is far better to instruct a trade mark expert to conduct trade mark searches before going ahead to see if your chosen mark is available for use and registration. If the risks posed by earlier, similar registered marks are too great, you can then discuss changing your mark as may be required to try to avoid any conflicts before you proceed.
You will then need to consider which goods and services you want the mark to cover. This will depend on factors such as existing and future business plans, cost, potential competitors and what is covered by prior, similar registered marks owned by third parties. Drafting the wording of the goods and services must also be in line with the current edition of the International Classification of Goods and Services applied for the registration of marks.
Other considerations are whether you want to register your mark in colour if it is a logo. There may also be specific requirements relating to the type of mark that you want to file, for example, a non-conventional mark such as a shape, sounds or smell or a certification or collective mark.
Only once you have decided on all the above, a trade mark registration company will help you complete the application form and submit it to the relevant authorities. The registration fee is payable at the time of submitting the application form, and this can be paid by debit or credit card, cheque, bank transfer or via an online account.
How long does it take to register a trade mark in Kenya?
The length of time it takes to obtain trade mark registration varies depending on the nature and extent of any issues which arise. On average, a straightforward mark which receives no opposition can proceed to registration in around 10 to 16 months.
What can you do if another business opposes your trade mark application?
Trade mark opposition can be raised on either ‘absolute’ or ‘relative’ grounds. Absolute grounds refer to issues inherent in the proposed mark itself, such as whether it is generic, descriptive or lacks distinctiveness. Anyone can raise an opposition on absolute grounds. Relative grounds apply where a third party contends your mark infringes an earlier right. Only the owner of the earlier right can oppose on relative grounds.
The raising of an opposition does not mean that your trade mark application is doomed to fail. Often, an amicable resolution can be reached between the parties, whereby they agree on terms on which their marks can co-exist. If the parties cannot reach an amicable solution, the matter will be decided by the Trade Marks Tribunal.
How long can a registered trade mark last?
Trademark protection lasts for 10 years but can be renewed indefinitely, subject to the payment of additional fees.
In summary, a registered trade mark is one of your business’s most valuable assets and plays a pivotal role in brand development, protection and commercialisation. Provided it is properly renewed, a trade mark’s longevity is unparalleled. It is vital to work with specialist trademark registration firms from the outset of brand development to ensure your proposed branding is capable of protection, and to give your subsequent trade mark applications the best chance of success.
