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Trade Marks Act

Trademarks Act Is The Act Of Parliament Relating To The Registration Of Trade Marks

A Trade Mark Is A Sign Which Serves To Distinguish The Goods Of An Industrial Or A Commercial Enterprise Or A Group Of Such Enterprises. According To Kenya Industrial Property Institute (KIPI) Trade Mark May Consist Of

  1. distinctive Works,
  2. letters,
  3. numbers,
  4. drawings Or Pictures,
  5. monograms,
  6. signatures,
  7. colours Or Combination Of Colours Etc.

The Sign May Consist Also Of Combinations Of Any Of The Said Elements.

The Trademarks Act (Cap 506) Describes A Mark As A Distinguishing Guise, Slogan, Device, Brand, Heading, Label, Ticket, Name, Signature, Word, Letter Or Numeral Or Any Combination Thereof Whether Rendered In Two-dimensional Or Three-dimensional Form.

A Trade Mark Can Be A Word, A Symbol , A Design, Or A Combination Of These, Used To Distinguish The Goods Or Services Of One Person Or Organization From Those Of Others In The Market Place.

SAMPLE TRADEMARKS 

Words:

‘COLGATE’ “COLGATE” is a registered mark of Colgate-Palmolive Company
‘PANADOL’ “PANADOL” is a registered  mark of GlaxoSmithkline.

The Trade marks Act (Cap 506) describes a mark as a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.

A trade mark can be a word, a symbol, a design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the market place (International Trade Mark Association, 2012).

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment

Preliminary Search

Before applying for the registration of a trade mark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark which could be confused with the intended trade mark.

An application for search and preliminary advice by the Registrar should be made by the prospecting proprietor or his agent on Form TM 27. Search is not mandatory but is advisable

Section 20

Application for registration

(1) A person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration either in Part A or in Part B of the register.

(2) Subject to the provisions of this Act, the Registrar may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think right.

(3) In the case of an application for registration of a trade mark (other than a certification trade mark) in Part A of the register, the Registrar may, if the applicant  is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with the application accordingly.

(4) In the case of a refusal or conditional acceptance, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the court.

(5) An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted.

(6) Appeals under this section shall be heard on the materials stated by the Registrar, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those so stated by him, except by leave of the court; and, where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of cost on giving notice as prescribed.

 (7) The Registrar or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connexion with the application, or may permit the applicant to amend his application upon such terms as the Registrar or the court may think fit.

 

21. Opposition to registration

 

(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted: Provided that the Registrar may cause an application to be advertised before acceptance if it is made under paragraph (e) of subsection (1) of section 12, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may advertise it again when it has been accepted but shall not be bound so to do.

 (2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Registrar of opposition to the registration.

(3) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

(4) The Registrar shall send a copy of the notice to the applicant, and within the prescribed time after receipt thereof the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.

(5) If the applicant sends a counter-statement, the Registrar shall furnish a copy thereof to the person giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(6) The decision of the Registrar shall be subject to appeal to the court.

(7) An appeal under this section shall be made in the prescribed manner, and on the appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(8) On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the court, bring forward further material for the consideration of the court.

(9) On an appeal under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated by the opponent, except by leave of the court; and, where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.(10) On an appeal under this section the court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.

(11) If a person giving notice of opposition or an applicant sending a counterstatement after receipt of a copy of such a notice, or an appellant, neither resides nor carries on business in Kenya, the court or the Registrar may require him to give security for costs of the proceedings before the court or the Registrar

relative to the opposition or to the appeal, as the case may be, and in default of such security being duly given may treat the opposition or application, or the appeal, as the case may be, as abandoned.

22. Registration

(1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either—

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration:

 

Provided that the provisions of this subsection, relating to the date as of which a trade mark shall be registered and to the date to be deemed to be the date of registration, shall, as respects a trade mark registered under this Act with the benefit of any enactment relating to international or inter-imperial arrangements, have effect subject to the provisions of that enactment.

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof under the hand and seal of the Registrar.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

A trade mark registration is valid for ten (10) years from the date of application and the registrar will notify the owner within six months of the imminent expiry of the concerned trademark. The owner is entitled to renew the trade mark every ten years.

Some trademarks e.g. Pepsi, Coca Cola are more than 100 years old

The Managing Director appointed under Section 11 (1) of the IPA also doubles up as the Registrar of Trademarks (the ‘Registrar’)[ Section 3 of the Trademarks Act] and for the avoidance of doubt, a tribunal is defined under the TMA as including inter-alia the Registrar.[ Section 2 of the Trademarks Act ]

The Registrar has no jurisdiction to hear disputes relating to passing off or infringement of unregistered and registered Trademarks respectively. Such disputes can only be instituted before the High Court.( SECTION 92)

Section 35 of the Copyright Act provides:

(4) Infringement of any right protected under this Act shall be actionable at the suit of the owner of the right and in any action for infringement the following reliefs shall be available to the plaintiff

(a) the relief by way of

i) damages( money),

ii) injunction,

iii) accounts or o

iv) therwise that is available in any corresponding proceedings in respect of infringement of other proprietary rights;

vi)  delivery up to the plaintiff of any article in the possession of the defendant which appears to the court to be an infringing copy, or any article used or intended to be used for making infringing copies; …

 (5) Where in an action for infringement of copyright it is proved or admitted

(a) that an infringement was committed; but

(b) that at the time of the infringement the defendant was not aware, and had no reasonable grounds for suspecting, that copyright subsisted in the work to which the action relates, the plaintiff shall not be entitled under this section to any damages against the defendant in respect of the infringement whether or not other relief is granted under this section.

(6) Where in an action under this section an infringement of copyright protected under this Act is proved or admitted, and the court, having regard (in addition to all other material considerations) to :

(a) the flagrancy of the infringement; and any benefit shown to have accrued to the defendant by reason of the infringement,

(b) is satisfied that effective relief would not otherwise be available to the plaintiff, the court, 'in assessing damages for the infringement, may award such additional damages by virtue of this subsection as the court may consider appropriate in the circumstances.

(7) No injunction shall be issued in proceedings for infringement of any right protected under this Act which requires a completed or partly built building to be demolished or prevents the completion of a partly built building.

Section 32 of the Anti Counterfeit Act ,2008 deals with offences relating to counterfeit goods.

Section 33 (1) of the Act provides for lodging a complaint to the Executive Director of the Anti Counterfeit Agency by a holder of an intellectual property right ,his successor in title ,licensee, or agent on reasonable suspicion that an offence under section 32  has been, or is being ,or is likely to be committed by any person.

section 33( 2)  the complainant shall furnish to the satisfaction of the Executive Director, such information and particulars as may be prescribed to the effect that the goods with reference to which that offence has allegedly been, or is being or is likely to be committed  prim facie are counterfeit goods

section 33(3)where the Executive Director is satisfied –

A)that the complainant is a person entitled to lay a complaint under subsection 1;and

b)that-

i)the goods claimed to be protected goods prima facie are protected goods;and

ii)the intellectual property rights ,the subject matter of which is alleged to have been applied to the offending goods ,prima facie subsists;and

c)that the suspicion on which the complaint is based appears to be reasonable in the circumstances  the executive Director shall cause appropriate steps to be taken in accordance with section 23(1).4)preceding provisions do not preclude an inspector from taking appropriate steps on his own initiative.

5)an Executive Director is not precluded from causing appropriate steps to be taken in accordance with section 23(1) in the event of infringement of intellectual property rights for which no complaint has been lodged by the holder thereof in accordance with subsection 1 of this section.

Section 34 empowers the Commissioner to seize and detain goods upon an application being made by the owner of the intellectual property rights who has valid grounds for suspecting that importation of counterfeit goods may take place.

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