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 Trade Marks 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?

• Trademark Search

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.

• Trademark 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 Trade Marks 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 Trade Marks 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.