Trademark Expungement Proceedings in Kenya
Pursuant to the Trade Marks Act (CAP 506, Laws of Kenya), a party may apply for variation or expungement of a registered trademark from the register of trademarks that is maintained at the Kenya Industrial Property Institute by the Registrar of Trademarks. Such an application shall be made in the required form setting out the interests of the applicant in the expungement and giving reasons why the trademark registration ought to be expunged. This application shall be filed with the Registrar at Kenya Industrial Property Institute or the High Court (depending on the circumstances) and the applicant shall also be directed to serve the application on the proprietor of that registered trademark.
What is Trademark Expungement?
Trademark expungement involves the striking off of an existing registered trademark from the trademark register at Kenya Industrial Property Institute. Expungement may be done on the grounds that the trademark was registered without any good faith intention by the proprietor to use the trademark in respect of particular goods or services or that the proprietor of the mark has not made good faith use of the mark necessitating the need for expungement.
Similarly, a person may apply for expungement of a trademark registered as a defensive mark with respect to use of a well-known mark in relation to specific goods not covered under the class of goods over which the proprietor holds the mark; any person may apply for the defensive trademark to be expunged in relation to those other classes, where the requirements of the defensive trademark registration are no longer satisfied i.e. that the trademark is no longer well known to support defensive registration in classes in which the trademark is not used.
A person may also apply for expungement of an expired trademark remaining on the registry and which has not been duly renewed, for instance where notice has been given to the proprietor to renew the mark after the expiry of the term of the trademark and no action is taken by the proprietor to renew and after the passage of time for renewal, the trademark still remains on the register.
A person may apply for expungement of a trademark where the mark is similar to an existing mark, but the offending mark was nevertheless registered
Documents Filed when Seeking Expungement
The appropriate documents to be filed here include the complaint set out in a statement, fully outlining the particulars of the applicant’s interest; the facts of the case and the relief he seeks including expungement and costs. The applicant for expungement shall file enough copies to be able to serve the proprietor of the registered trademark
How to defend your trademark against Expungement Proceedings?
After the proprietor of the trademark receives the documents from the applicant for expungement; he has the opportunity to file a counterstatement and he shall also set out reasons why the trademark should not be expunged from the register. If the proprietor of the mark admits any facts as stated by the applicant, he shall say so. Thereafter the applicant for expungement may file a statutory statement with evidence in support of the expungement and the proprietor shall similarly file after receipt of this document. Exhibits of documentary evidence may be annexed to these statements of evidence. Parties may address issues such as use (or non-use) of the trademark in question; priority interests; the well-known nature of competing trademarks; issues of infringement among other relevant matters
The Expungement Hearing
At the close of exchange of evidence, the parties shall be a given a hearing date when they shall be heard by the Registrar on their respective arguments as pertains to the expungement proceedings. The proprietor shall notify the Registrar that they intend to attend the hearing upon receipt of the hearing notice from the applicant for expungement. The Registrar has the discretion to require the attendance of witnesses to provide oral testimony or he may require parties to rely on the documentary evidence as filed or he may require both written evidence and oral testimony to be given before him.
Once a decision is issued, parties shall be notified of the decision that the Registrar has made on the application for expungement. An aggrieved party may apply to the Registrar to provide the materials used in coming to the decision. Appeals lie to the High Court and an aggrieved proprietor may apply to quash the decision of the tribunal on presentation of valid grounds for the appeal.
Award of Costs
It is in the discretion of the Registrar to award costs between the parties and the party awarded costs shall prepare the bill of costs and file it after paying requisite statutory fees. The registrar may allow the bill as presented or with variation in order to make the fees reasonable.