Registering your Trademark is the quickest and most cost-effective way to ensure legal exclusivity for the use of your name or logo etc. Registering a Trademark for your business or product name is in essence similar to obtaining a certificate of title in relation to land.
Registering your Trademark significantly reduces the risk of being prevented from using your name or logo by other traders.
One of the most emotionally draining and expensive things that can happen to anyone who owns a brand is receiving a demand letter from a lawyer which requires you to stop using the name which you thought you owned.
So, what is a Trademark?
Section 2 of the Trademarks Act Cap 506, Laws of Kenya defines a Trademark as mark used or proposed to be used:
- in relation to goods for the purpose of indicating connection in the course of trade between the goods and some person having the right either as proprietor or as licensee to use the mark, whether with or without any indication of the identity of that person or distinguishing goods in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person;
- in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person or distinguish services in relation to which the mark is used or proposed to be used from the same kind of services connected in the course of business with any other person.
Simply, a Trademark is a recognizable name, word, phrase, logo, symbol, design, image, or a combination of these elements which identifies products or services of a particular source from those of others.
Why is it important to register a Trademark?
A registered Trademark confers 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.
The law allows the owner of a registered Trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colourfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services.
The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example may be a very large multinational brand such as “Sony” where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
A proprietor of a registered Trademark enforces such exclusive rights by exercise of the right to institute civil action on infringement of the Trademark.
It is worth noting that under the Trade Marks Act, only registered Trademark proprietors can successfully claim for Trademarks infringement.
Who Qualifies to Register a Trademark?
Which body Deals with Trademark Registration?
The Kenya Industrial Property Institute, located on Popo Road, Off Mombasa Road, South C, Weights & Measures Complex, Nairobi, is the statutory Trade Marks Office which handles all matters involving the filing, prosecution and registration of Trade Marks.
Where are Trademarks Showcased?
For the sake of corporate identity however, Trademarks are also being displayed on company buildings.
What is the Process of Registering a Trademark?
- Before registration of a Trade Mark (which can be a name or logo or both), one must indicate the class or classes that the Mark is intended to be registered under. In this regard, the 9th edition of the Nice Agreement on International classification of goods and services is followed. The Nice Agreement has classified Trademarks into 45Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.
- A search is then carried out at the Trademark Registry situated at the Kenya Industrial Property Institute (“KIPI”) to ascertain whether there is any mark on record that resembles the mark being applied for registration. A standard statutory search request form (Form 27) is filled with details of the proprietor, his trade or business address. This should be accompanied with a representation of the mark (preferably coloured) of approximately size, say 8 by 8 cm.
With regard to the search, please note that searches and registration must be conducted separately for each class and a search carried out in each Class is charged separately and registration in each Class is also charged separately.
- If the Registrar of Trademarks finds the proposed mark acceptable, he confirms that the mark is available for and acceptable for registration. He may emphasise that the mark retains the colours as contained in the representation. The Registrar may refuse to register a mark or accept it subject to certain modifications or conditions.
- If the mark is accepted for registration, the Registrar then publishes the mark in the KIPI Journal. After the expiry of sixty days from the date of the publication, the Registrar will register the mark, subject to the following conditions:
- That any objections to the registration of the mark having been lodged within the sixty day period have been satisfactorily determined.
- That the applicant has complied with any conditions for registration of the mark prescribed by the Registrar; and
- Payment of all charges due including registration fees.
- The applicant is then issued with a Certificate of Registration of the Trademark.
What are the Timelines of Registering a Trademark?
In our experience with Government registries in Kenya including the Trademark registry, certain procedures may be delayed and diligence on the part of the Registry attendants would be required to ensure the registration is finalized within good time.
In this regard, it may well take 9- 12 months before a Trademark is registered.
Is there a criterion for Registration of a Trademark?
In order for a Trademark to be registrable, it must contain or consist of at least one of the following essential particulars:
- the name of a company, individual or firm, represented in a special or particular manner;
- the signature of the applicant for registration or some predecessor in his business;
- an invented word or invented words; and
- a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.
Are there any requirements needed of the Proprietor when registering a Trademark?
Yes, the following will be requested from the proprietor of the Trademark by the persons undertaking registration of the proposed Trademark:
- signed Power of Attorney where applicant is represented by an Agent;
- Name, address, Nationality, Type of Entity of Applicant;
- Two identical specimen of the Trademark;
- International class/es;
- List of Goods/Services; and
- If claiming priority, a certified priority document.
For how long does a registered Trademark stand Protected upon Registration?
Section 23 of the Trade marks Act provides that the registration of a Trademark shall be for a period of Ten (10) years from registration date (which is also the filing date) and may be renewed for a further period of Ten years thereafter at a fee.
Can a Proprietor of a Trademark assign a registered Trademark?
Yes! A registered trade mark is assignable and transmissible in respect of either all the goods or all the services in respect of which it is registered or of some only of those goods or services and either in connection with the goodwill of a business or not.
What of Licensing a registered Trademark?
Licensing means the Trademark owner (the licensor) grants a permit to a third party (the licensee) in order to commercially use the Trademark legally. It is a contract between the two, containing the scope of content and policy. The essential provisions to a Trademark license identify the Trademark owner and the licensee, in addition to the policy and the goods or services agreed to be licensed.
The licensor must monitor the quality of the goods being produced by the licensee to avoid the risk of Trademark being deemed abandoned by the courts.
A Trademark license should therefore include appropriate provisions dealing with quality control, whereby the license provides warranties as to quality and the licensor has rights to inspection and monitoring.
What are the Advantages of Registering a Trademark to protect a Brand?
- Geographical Coverage
Registering your Trademark usually gives you nation-wide protection instead of rights that are restricted to the specific areas or regions in which you trade.
Further, if you want to expand overseas, this gives you a good platform to obtain rights in other countries – even before you commence trading in those countries.
- Deterring and Preventing Others
Trademark registration deters other traders from using Trademarks that are similar or identical to yours in relation to goods and services like yours (“conflicting Trademarks”). This benefit manifests itself in a number of ways:
- Before other traders choose their brand names:Being able to use the ® symbol puts others on notice of your rights, and being registered means that others can find your Trademark when searching the official register before choosing to commence using a particular name. This makes it much less likely that they’ll choose to use a conflicting mark in the first place.
- When other traders seek to register their brand names as Trademarks:Having your Trademark on the register makes it likely that the Trademarks Registrar will refuse to register conflicting marks. If (despite this) another trader is able to convince a Registar to accept the mark for registration, having a prior registered mark gives you a strong right to oppose the registration before it’s officially entered on the register.
- When you discover another trader using a conflicting mark in the market place: Having a registered Trademark makes it much easier, quicker and cheaper for you to prevent other traders fromusingconflicting Trademarks. Often one or two Demand Letters from your lawyer will be sufficient, but if it is not, the process of taking someone to court under the Trade Marks Act , 2002 is much less expensive than the options for owners of unregistered Trademarks.
- Protecting yourself from Infringement Claims
If for Instance Xyz is using her registered Trademark, the Trade Marks Act, 2002 gives her a complete defence should a second person (e.g. Xyw) sue her for infringing his registered Trademark. In other words, as long as she is using her registered trade mark, she knows that she is not infringing the rights of any other traders.
- Controlling the Use of your Brands by Others
Registering your Trademark makes it a lot safer and easier to licence the use of your Trademark to others (e.g. manufacturers, distributors, franchisees etc).
- Capturing the Value of What you Create
Holding a registered Trademark significantly increases the value of your brand to potential purchasers, and hence any purchaser of your business is likely to pay much more for the goodwill that you build up.
Manufacturing and Service Providers face many challenges, most notably high fuel and energy prices and Kenya’s notorious infrastructure problems, but the sectors are a powerful player in the economy – and indeed in the East African Community (EAC). So it is little wonder that copycats should emerge in every sector of the industry, to cash in on established brands.
An increase in suits contesting brand names in the Kenyan market shows how important the protection of brand identity has become to maintain an edge in an increasingly competitive business environment.
Just like securing your interests in Land vide a Certificate of Title, securing a Certificate of Registration of a Trademark is the sure way to secure your interests in your brand.