HOW ONE MAY REGISTER A TRADEMARK IN KENYA

HOW ONE MAY  REGISTER A TRADEMARK IN KENYA

Governing laws include

• The constitution of the Republic of  KENYA
• The Trade Mark Act Cap 506 Laws of Kenya
• Industrial Property Act

A trademark  includes 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. It must be capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking.
The trademark should not be misleading for it to be registered in Rwanda.
A trademark may consist of any word, symbol, design, slogan, logo, colour, label, name, signature, letter, numeral or any combination of them and should be capable of being represented graphically.

Section 15A of the Trade mark  Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

Once a trademark is registered it takes a period of ten years to expire and upon expiry, it is renewed on application by a registered user/owner.
Below is the procedure for registering a trademark in Kenya

1. Reduce the intended trademark in material form i.e. draw it (MAKE 7 representaions of the original mark to be registered .
2. Obtain trade mark search form from Registrar of trademarks at Kenya Industrial Property Institute (KIPI).
3. Fill the proposed trade mark details for search at the registry of trademarks (KIPI).
4. Pay search fee at the bank as advised and pick payment slip.
5. Submit your search form with intended mark(s) together with payment receipt to Registrar General’s office for search.
6. You may obtain advice from the registrar as to whether the proposed trademark appears to the registrar to be inherently adapted to distinguish or capable of distinguishing goods or services of the proposed undertaking from those of other undertakings.
7. Depending on the registrar’s advice, prepare your application for trade mark registration addressed to Registrar  at KIPI
8. OBTAIN Trade mark registration form and it filling accordingly indicating all particulars including the NICE classification.
9. Attach the address and contacts of the applicant.
10. Have your application assessed for application fee at either BANK or KIPI offices.
11. Pick the assessment slip and pay according application fee as advised.
12. On the application attach or fix the proposed mark to be used, the class of goods or services, the applicant’s name, address and the signature.
13. The foreign applicant (entity) shall appoint a lawyer as his or her agent/authorized industrial property agent for purposes of trade mark registration in Rwanda either by granting him or her powers of attorney or instruction letter.
14. An Agent should obtain the agent trademark authorization form and complete it accordingly
15. Foreign applicants will have to attach notarized copies of the certificate of incorporation while local applicants should attach copy of their domestic company certificate of registration.
16. Prepare a Postal address for the Applicant and Proposed Physical address of the Applicants. Address includes road, plot number, town, county / Country.
17. Attach all the documents mentioned above including the such form on the application
18. Submit the application for registration of trade mark together with the PAYMENT receipts to the office of registrar of trade marks at Kenya Industrial Property Institute (KIPI) for consideration.
19. The registrar will then determine.examine if the trademark is registrable and whether it conflicts with prior existing registrations or applications for trademark registrations.
20. If the registrar considers the intended mark registrable (if the registrar accepts the application) he or she shall prepare a 60 days’ notice of the application to be be advertised and  published in the KIPI journal to allow interested parties to raise objections to the pending application if any.
21. After the notice has been published i wait for 60 days to expire from the date of publication.
22. If there is no opposition after the expiration of sixty days of the advertisement, the Registrar shall upon payment of the necessary registration fees by the applicant enter in the trademark on the register and issue certificate of registration of the trademark.

• If there is opposition the person opposing must file the notice of opposition within the 60days. The person opposing shall file a notice of opposition and statement of grounds with the registrar of trademarks within sixty days from the date of publication of the trademark application.
• The applicant must then be sent a copy of the opposition documents for perusal and a response forthwith.
• The applicant files a counter statement within thirty days
• The counter statement is then sent to the applicant for reply if any and further evidence
• The opposition is then set down for hearing and a decision is made by the registrar.
• Any person aggrieved by the decision of the registrar has a right through his or her lawyer to appeal to Court by filing application challenging registrar of trademarks’ decision .
  Author is A regional transactions legal consultant (ADVOCATE) at NOA REGIONAL ASSOCIATED ADVOCATES AND LEGAL CONSULTANTS
  Email address: onlinetransactionconsultancy@gmail.com.
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  NOTE: whereas the author has made necessary efforts to ensure the accuracy of this post, it is not intended to provide specific legal advice to a particular individual as individual situations may differ.
  For specific technical / legal transaction advice on this subject matter and related subject, you may contact the author at online consultancy fee, or contact any transaction legal consultant of your choice.
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Okumu Martin,Regional Transaction Consultant(Advocate)