INTELLECTUAL PROPERTY PRACTICE GROUP
We handle the registration of Trademarks, Industrial Designs, Utility Models, Technovations and Copyrights in Kenya, Uganda and Tanzania.
We also give advice on royalties, trade names and domain names; and draft licensing/assignment agreements pertaining to intellectual property. We help clients seek global international protection over intellectual property via the World Intellectual Property Organization (WIPO). We also handle applications before ARIPO for intellectual property protection in Africa.
Speak to us to handle opposition actions; infringement and passing off actions on your behalf as we have expertise in appearing before the Kenya Industrial Property Institute Tribunal as well as handling appeals before the High Court and the Court of Appeal.
Registration of marks
Infringement and Passing Off Actions
Advisory Opinions on Novelty
your IP lawyer
Joan Mukoya is an Advocate of the High Court of Kenya, duly authorised as a trademark attorney/lawyer and IP agent; and has extensive experience in the registration of intellectual property rights (8+ years). She holds an LLM (Commercial Law) from the University of Cape Town in South Africa. She presently handles a portfolio of trademark and other IP registrations and renewals for inter alia: agri-innovation companies; alcoholic beverage companies, financial services companies and creatives.
She diligently works for clients and is always promptly responsive while endeavoring to provide valuable legal advice to local and international clients seeking to protect their IP rights in Kenya and globally through IP registration or IP prosecution in IPR infringement cases.
Before setting up Koya & Company Advocates which is a civil and commercial law firm with an intellectual property practice group, Joan previously worked at two top tier law firms and a leading investment fund manager investing in Sub-saharan Africa and Latin America (AUM exceeding USD 60M).
Our Portfolio speaks for itself
FREQUENTLY ASKED QUESTIONS
Registration of Trademarks and Trademark Infringement
What is a Trademark?
A trademark is a word, phrase, or logo or a combination of all 3 that identifies the source of goods or services. It distinguishes a brand as being particular to a business. There are different types of trademarks for instance: certification trademarks, service marks, collective trademarks etc. A word, number, 3D object, logo or a combination of these preceding elements are all examples of trademarks in Kenya.
What are the Governing Trademark Laws in Kenya?
In Kenya, the main law governing trademarks is the Trademark Act (CAP 506). Kenya is also a party to the WIPO Madrid Convention.
What is the Value of Trademarks? What kind of Protection do Trademarks Afford your Business?
In a nutshell, trademarks prevent economic damage to your business. Trademarks protect the goodwill and reputation of your business’s brand. A trademark avoids confusion in your customers when it comes to competing goods and services by making it clear to customers that indeed you and not anyone else is the source of your goods and services and that they can rely on your trademark as a reliable signifier of your brand as the actual source of the goods and services. It’s also the basis to protect your goods and services from low quality counterfeits as only the registered owner of a brand can provide goods and services as being tied to a particular mark.
What is the Trademark Registration Procedure in Kenya?
You need to do a trademark search prior to beginning the application process. Only after you get preliminary advice from the Kenya Industrial Property Institute (KIPI) that indeed the search shows that the trademark in fact has no registered proprietor can you proceed to lodge the trademark application forms.
After you receive the search results showing the mark is not registered you can go ahead to prepare the requisite statutory forms and one of the essential forms here is TM27. When it comes to filing the application I strongly advise businesses to have an authorized agent, namely an advocate to prepare and lodge the application at KIPI to avoid making mistakes that will prove costly (even as far as denying you the envisaged trademark protection in good time). A lawyer will further advise you on the best trademark protection coverage you can get especially in terms of the description of your goods and services and the applicable trademark classes.
What is the Trademark Registration Procedure at WIPO/ARIPO?
Once you have the basic registration of the mark in Kenya and your business is operating beyond Kenya’s borders - that is internationally or multinationally- you may want to protect your brand in those foreign markets where the business is operating. To do this, you can easily make an application via WIPO or ARIPO or other regional specialized international organisations that protect intellectual property. Through these WIPO and ARIPO offices, your application will be presented to the national intellectual property offices of the particular markets and subsequently your trademark will be protected in the specified countries. I strongly advise you to reach out to Koya & Co. Advocates to advise and guide on these international trademark applications to avoid immense costs if one does not file the application in the correct manner.
What is Trademark Infringement?
· The trademark owned by a business is infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or provision of any services in respect of which it is registered.
· Another important point to note is that under S15A of the Trademarks Act, the Registrar of Trademarks will not register an unregistered mark with an unconnected proprietor where the mark has a well-known status globally or nationally, whether or not the owner of the mark is operating in Kenya. There are various legal issues pertaining to this under the Paris Convention.
· Get in touch if you need more information on this.
What if you Don’t Own the Mark being Infringed upon - Meaning you Have not Registered it?
While you will have no cause of action for breach of trademark under the Trademarks Act; one can still seek recourse by bring a civil law suit for the tort of passing off whereby you sue the defendant for presenting his goods and services as being your goods and services or purporting to connect your goods and services to those that the defendant provides, thus imperiling the reputation of your business; and protects the goodwill of your business from misrepresentation and mis-association.
What are the Remedies in Trademark Infringement or Passing Off Action?
The most valuable remedy here would be an injunction filed under a certificate of urgency to halt the damage to your business’ brand and you would also seek a permanent injunction. Secondly, you would seek to obtain damages for the harm already caused to your brand.
When Should you Register an Industrial Design?
Ideally, industrial designs should be registered before they are published or publicized to the world. This determines the priority of ownership of the design where there are competing creators.
Where Can I Register my Industrial Designs in Kenya in Order to Protect my Intellectual Property?
Registration involves filing an application at the Kenya Industrial Property Institute, (KIPI). The application consists of:
a. A completed application form.
b. Specimens of the design
c. Drawings, photographs of the article and an indication of the kind of products for which the industrial design is to be used
d. Description of the novel features of the design
e. Application fee as Stipulated in the Schedule of Fees in The Industrial Property Act
What Does the Registration Process Entail? Advertisement and Issuance of Certificate of Registration of the Industrial Design?
After filing for registration, the industrial design shall be published in the Kenyan Gazette to allow for any objections. The publication runs for 60 days. If there is no objection by any other person claiming ownership of the industrial design, the design shall be registered and a registration certificate issued.
What is the Duration of Registration and Renewal?
Total timeline to complete the registration process is 3-8 months.
The certification of registration confers protection of design for 5 years, thereafter you need to renew the registration every 5th year.
What are the Costs of Registering an Industrial Design in Kenya?
The number of unique designs you wish to have registered to determine the professional legal fees and government fees payable.
The Process of Registering a CopyRight
What is the Importance of Copywriting your Work?
Copyright prevents infringing copies being made of artistic work; it allows the creator of the work to be monetarily compensated for their creative, innovative and artistic work through royalties (which is a percentage of the price at which the artistic work is resold) and licensing fees.
What is a Copyright Licence?
· The owner of the work needs to allow the display or publishing, performance, recording or resale of work through a licence.
· A licence can be exclusive to one licensee or to many sublicensees. For instance, computer software is licenced to each person who buys the software, that is a sub-licensee.
· Parties agree on the duration of the term under which the licence will be valid and if not the Copyright Act has clauses on the term of the licence.
Can I Sell/Dispose of my Copyright?
A copyright owner can transfer ownership of his copyright to another person via an assignment. Such an assignment is only valid when registered with KECOBO.
How long does Copyright last in Kenya?
Different types of work run for the particular duration stipulated in law; for instance, copyright in artistic work registered in Kenya ends 50 years after you, as the creator die.
What is Copyright Infringement?
This is the display or publishing, performance, recording or resale of work by a third party without a licence from the owner of the copyright.
Also, Important to Know What Does Not Constitute Copyright Infringement
· Copyright does not prohibit doing of any of these acts e.g., publishing, performance etc by way of fair dealing for the purposes of scientific research, private use, criticism or review, or the reporting of current events.
· Copyright does not prevent caricature where a third party makes satirical fun of the artist’s work, or if the work is used in a broadcast, for instance tv or radio broadcast.
Are there Mechanisms for the Enforcement of Copyright in Kenya?
The statutory body in charge of enforcing copyright in Kenya is the Kenya Copyright Board -KECOBO. KECOBO also organizes the collection of royalties for artists and fines/penalises persons and businesses that infringe on copyright. If you want to get in touch with this organization, you can find the contacts on Kenya Copyright Board website.
How Can I Register Copyright in my Work?
The Kenya Copyright Act 2001 and the regulations thereunder set out the process of registration of the various categories of works that can be copyrighted; for instance, you may be interested in learning how to copyright an app in Kenya. The Schedule of Fees also guides creators on the cost of copyright registration in Kenya. Creators of works also have the option for E Registration.