A trademark is a legal recognition granted for the purposes of protecting brand names and logos of goods and services. There is no legal requirement for one to register a trademark. However, as a type of intellectual property, a trademark differentiates, maintains individuality, and protects goods and services from counterfeits.
Section 6 (2) of the Trademarks Act, CAP. 506 states that the registration of Trademarks in Kenya shall be classified in accordance with the International Classification of Goods and Services commonly known as the Nice Classification. The Nice Classifications identifies forty-five (45) categories each outlining the different sets of goods and services under which a Trademark can be registered.
Section 2 (1) of the Act describes a “mark” as 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. Suffice to say over time, a trademark acquires goodwill and becomes a symbol of quality and value.
Benefits of Registration
Registration of a Trademark offers several advantages some of which include:
1) The owner of a registered trademark enjoys the sole right to use the mark in connection with the specified goods and/or services, for a period of 10 years, after which it may be renewed (Section 23 (1) of the Act.
2) Registering a trademark makes it less likely that another party will inadvertently market their own goods or services under the same or a similar mark. In Kenya, the Kenya Industrial Property Institute keeps a database accessible on application, that gives the public the ability to search and make a determination whether a similar mark is already in use.
3) Owners of registered marks may enforce a legal action for the protection of goodwill. Goodwill was defined in COMMISSIONERS OF INLAND REVENUE –VS- MULLER & COMPANYS MARGARING 1901 AC as:-
“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force that brings in custom. It is the one thing that distinguishes an old established business from a business at its first start”
To succeed in a legal action for the protection of goodwill, the owner of the registered mark is not required to prove that the unauthorized use is confusing. The burden of proof lays with the owner who must demonstrate that the mark has significant goodwill attached to it and that the unauthorized use of the owner’s mark impacted the goodwill in a way likely to cause its value to depreciate.
Procedure for Registration of a Trademark
Successful registration of a Trademark would entail the following processes;
1) Identification of Classes; this involves the identification of a class (es) as provided under the Nice Classification of Goods;
2) Preliminary search; this is undertaken at the Kenya Industrial Property Institute to ensure that a mark is available for registration;
3) Application for registration; upon receiving confirmation that a mark is available for registration, a formal application for registration is lodged using the prescribed form;
4) Examination; on receiving the application for registration, the Registrar of Trademarks will examine the same to ascertain that the mark/ name is available and acceptable or is unavailable for use or that it is accepted with conditions;
5) Examination Report; an examination report stipulating whether the mark/ name is available and acceptable or is unavailable for use or that it is accepted with conditions will be issued and the mark will either proceed for registration or be rejected. Where a mark is refused registration the applicant is afforded an opportunity to make submissions to the Registrar as to why the application for registration should be reconsidered;
6) Advertisement; if the mark is approved for registration, it will be published in the Kenya Industrial Property Institute Journal for a period of sixty (60) days within which time any person opposed to the registration of the mark may lodge their objection; and
7) Registration of the trademark; if there is no opposition to the registration of the trademark after the lapse of statutory sixty (60) days, the mark will be registered, a certificate of registration issued and the mark will be entered into the Trademarks Register.
Grounds of Refusal to Registration
The Trademarks Act has laid out grounds under which registration will be refused. These grounds include:
a) where the registration of the mark would likely deceive or cause confusion;
b) where the registration of the mark would be contrary to law or morality,
c) where the design of the mark is scandalous,
d) where, in respect of good, the mark is identical with or nearly resembles a mark belonging to a different proprietor’s goods or description of goods and the same is already on the register,
e) where, in respect of services, the mark is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services.
f) where a mark, or an essential part thereof, is likely to impair, interfere with or take unfair advantage of the distinctive character of the well-known trademark.
g) where the application for registration of the mark is made in bad faith.
h) where the mark or is designed in such a way that it nearly resembles the armorial bearings, insignia, orders of chivalry, decorations or flags of any city, borough, town, place, society, body corporate, institution or a person appears on the mark.
This write-up is for informational purposes only and should not be construed as a legal opinion. If you have any queries or need clarifications, please do not hesitate to contact Gregory Makambo, Partner, (gmakambo@makambolaw.com), Kelvin Mwaniki, Associate, (k.mwaniki@makambolaw.com) or your usual contact at our firm, for legal advice.