In this article, we will have a look at the classification of trademarks in Kenya. A trademark is a distinctive sign, which distinguishes goods or services produced or provided by one enterprise from another in the market place. The registration of trademarks in Kenya is done by the Kenya Industrial Property Institute.
A Trade Mark can be a word, a symbol, a design, slogan, device, brand-name, heading, label, ticket, name, signature or numeral or any combination whether rendered in two dimensional or three-dimensional form. The main function of a trademark is to enable consumers to identify a product of a particular company so as to distinguish it from other identical or similar products provided by competitors.
Classification of Trademarks in Kenya
1. Service marks
Service Marks used to identify certain services provided by a specific enterprise. They distinguish the goods of one enterprise from those of others. Services may be of any kind, such as financial, banking, travel, advertising, or catering, to name a few.
A good example is Tuskys. It is a registered Service Mark of Tusker mattresses Limited.
2. Certification marks
These marks are used to identify products that comply with a set of standards and have been certified by a certifying authority. A good example is the Kenya Bureau of Standards certification mark. Check out the four KEBS marks of quality here.
3. Distinguishing Guise
A distinguishing guise identifies the unique shape of a product or its package. A good example is the shape of the Coca Cola bottle.
4. Well-known marks
These are marks that are considered to be well known in the market and as a result, benefit from stronger protection. Examples of well-known marks include Toyota, Mercedes Benz, Microsoft, Youtube, Facebook, Google, Sony, Unilever, Samsung, Yahoo, etc.
How to Register a Trademark in Kenya
While it is not compulsory, it is highly advisable, since registration provides exclusive rights to prevent unauthorized use of the trademark.
In order for a trademark to be registrable, it must contain or consist of at least one of the following essential particulars.
Requirements for registration of a Trademark in Kenya
- 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
- 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.
- Any other distinctive mark
As you can see from the requirements listed above, the key requirement is DISTINCTIVENESS.
Registration Process of a Trademark
Before applying for the registration of a trademark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark that could be confused with the intended trademark. This is done by the Kenya Industrial Property Institute.
Though not mandatory, you may request the Registrar to carry out a search and give preliminary advice (By filing trademark form TM 27) as to the registrability of your mark.
After that, you will hand in a duly completed trademark application form(TM 2), which shall include your contact details, 7 illustrations of the mark, description of the goods and or services, and class for which you wish to obtain trademark protection, and pay the required fees.
The application should also be accompanied by form TM 32 (for entry of the address of service in Kenya). The applicant is required to file a separate application for each mark in each different class.
You can download the forms here
The application fee to register a trademark for the first class is Ksh 4,000.
After the application, the following steps are taken by the Kenya Industrial Property Institute in approving the trademark.
1. Formality Examination.
The application is examined to make sure that it complies with formality requirements I .e.cwhether the application fee has been paid, the application form is properly filled in, and contains all the necessary information.
2. Substantive Examination
The application is then examined to verify whether it complies with all substantive requirements i.e., whether it belongs to a category, which is excluded from registration by the Act, and whether the trademark is in conflict with any existing mark on the register.
Once it has been decided that there are no grounds for refusal, the trademark is published in the Industrial Property Journal or in the Kenya Gazette allowing a period of 60 days for any person to give notice of opposition.
The initial registration is valid for 10 years.
The mark may be renewed indefinitely by paying the required renewal fees after 10 years. However, the mark may be removed from the register by the Registrar for the non-payment of renewal fee. The renewal fee is Ksh 4,000 for first class.
How long does it take to register a trademark in Kenya?
The time required for the registration of your trademark will vary, generally ranging from 6 months to 2 years, depending, among other things, on how long the applicant takes to comply with registration requirements.
If you have any questions regarding trademarks in Kenya, don’t hesitate to contact the Kenya Industrial Property Institute using the avenues below.
Kenya Industrial Property Institute Contacts
Office Location: KIPI Centre, Kabarsiran Avenue, Off Waiyaki Way, Lavington
Phone: 0743463407; 0743463408 ; 0702002020; Airtel: 0732487412 & 0734515312; 0736002020
Email: [email protected]