Trademark Registration in Kenya: why is it important?
Trademark registration in Kenya is important but it can be perceived to be a difficult and complicated process. why don’t we break it down?
Without the correct information it can be a nightmare, but in this article I will help you get a better understanding what is the importance of trademark registration in Kenya. Let’s dive right into it:
What is a trademark?
A trademark is a sign that is legally registered and helps distinguish goods offered by one business entity from another. A trademark can be word, symbol design or a combination of the above. It is important to note that the owner of a trademark can be an individual, company, partnership or society as long as they meet the necessary requirements.
The body that deals with trademark registration in Kenya is The Kenya Industrial Property Institute (KIPI). KIPI is a parastatal under the Ministry of Industrialization, Trade and Enterprise Development.
The functions of the Institute include administration of Industrial Property Rights; Provision of Technological Information to the public; Promoting Inventiveness in Kenya and provision of Training on Industrial Property.
Currently, trademark registration in Kenya can also be done through the Madrid system. One of the advantages of the Madrid system; once the trademark is registered the owner can protect it in all states that are party to the system.
Procedure of registering a trademark in Kenya
There are several steps involved when securing/registering a brand in Kenya. They include: Search, registration, advertising, approval and lastly certification. We will now have an in depth look into each step and what it involves.
A search has to be conducted before applying for registration to find out if the Trade mark can be registered or not. The search is not mandatory but it is advisable because it helps determine whether the application has a chance of success or whether it would be a waste of time and money to register it in its present form.
Application for registration of Trademark
After the search has been conducted and the mark can be registered. The next step will be to make an application for registration. The forms to be used for this step are Form TM2 and TM 32.
For foreign companies to register their Trade marks in Kenya they have to appoint an agent in Kenya. Therefore, the application should be accompanies by a form of authorization(TM 1) or the power of attorney duly completed as signed and must have duty stamp affixed on it.
For entry of the address of service in Kenya, the application should be accompanied by Form TM32. The applicant is required to file a separate application for each mark in each different class.
If the Registrar approves the mark for registration he will instruct you to pay an advertisement fee. The mark will then be 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 however, a notice of opposition in the form of Form TM 6 is filed and opposition proceedings begin.
At this stage if no objection has been raised the Trademark is registered. The registrar will register the trademark and enter it in the Trade Marks Register. Once registered a trademark is registration is valid for ten (10) years from the date of registration. The registrar will notify the owner of the trade mark of the expiry six months prior to the expiry of the 10 years.
This is the final process where the Registrar issues the applicant with a Certificate of Registration of the Trademark.
Advantages of trademark registration
There are advantages that come with registering a trademark, they include:
Registration of a Trademark gives a bundle of exclusive rights upon the registered owner; including the right to exclusive use of the mark in relation to the products or services for which it is registered.
Gives you the power to assign or transfer the trademark to others; A registered trademark is assignable in respect of either all the goods or all the services in respect of which it is registered. Transmission refers to transfer by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer while assignment refers to allocation of the mark to another person. Assignment or transmission may be done at a value to the owner of the mark. Only the legal owner of a mark can transfer or assign it to another party.
A registered trademark also…
Enables you recover in the event of infringement; The use of a registered mark without the owner’s authorization constitutes infringement. For a person to institute proceedings for infringement, the mark must be registered. The Act prohibits the institution of infringement proceedings over an unregistered trademark.
Protects your brand from counterfeits; Trademarks are used as distinguishing factor. The Trademarks Act allows registration of a mark in relation to goods. Where this is done, the mark must be capable, of distinguishing goods with which the proprietor of the trademark is connected. Registration therefore enables the owner identify his goods and prevent the use of the mark in selling counterfeit or substandard goods. This in turn protects the reputation of the business.
Enables you to brand yourself by providing exclusive use to your mark; Registration of a mark gives the owner the right to the exclusive use of the mark. Registration notifies other persons that you are the owner of the mark which becomes a unique brand associated with you which other persons are prevented from using.
As we wind up, trademarks serve several purposes which include; ensuring that consumers can distinguish between products, enabling companies to differentiate their products, using a trademark as a marketing tool and also as a basis for building brand image and reputation among others.
Therefore, it is advisable that you register your trademark as early as possible to secure it and start creating a brand for your business. It is also important to ensure that you get the information from the correct sources; The World Intellectual Property Organization (WIPO) or The Kenya Industrial Property Institute (KIPI). In case there is need to verify information, it would be best to seek guidance from professionals who are well versed with trademark registration in Kenya.
Should you have any question on the above article, please do not hesitate to contact me via email at firstname.lastname@example.org