Do you have that mark, that word, that sign or brand that you identify with? Well, until you register it, it is not yours and you have no exclusive claim to it. A trademark is a mark or sign that distinguishes the goods of one entity from another. The trademark may consist of one or more distinctive word, letter, numbers, drawings, pictures, signatures, colors or a combination of all these. Service Mark is a sign which serves to distinguish services of one entity from another. It may consist of the same characteristics as those of a Trade Mark.
Who can register a Trademark?
Any individual, company, partnership or society can register a Trademark as long as they meet the necessary requirements.
Why register your Trade Mark?
It helps distinguish your products from that of other competitors. Registration of your Trade Mark gives you an exclusive right to that mark, it is evidence that the mark is yours and it affords you legal rights against others who may want to infringe your right to that mark. Examples of Trademarks include Jogoo which is owned by Unga Limited, Toyota owned by Toyota Company. These marks have been registered by the respective companies and as such, they have exclusive rights to those marks. The process of registration also involves extensive searches to ensure that your mark does not resemble any existing Trademarks and as such helps you avoid being sued for infringing on other peoples Trademark.
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.
- An invented word or invented words.
- Any other distinctive mark.
Procedure for registration of a Trademark in Kenya
The Kenya Industrial Property Institute (KIPI) is the body mandated with the registration of Trademarks.
- Preliminary search
A search has to be conducted before applying for registration to find out if the Trademark can be registered or not. Registration will be refused if the mark/ sign resembles another registered Trademark. Though not mandatory it is important to conduct a search before proceeding with the registration process to avoid spending time and money on an application that will be refused. The relevant form is Form TM 27.
- Application for registration of Trademark
You have conducted the Preliminary search and are satisfied that the mark can be registered. The next step will be to make an application for registration. This is done in form of Form TM 2 and TM 32.
For foreign companies to register their Trademarks in Kenya they have to appoint an agent in Kenya and as such, they will in addition to Form TM 2 and TM 32 require Form TM 1 for an appointment of the agent.
At this stage the Registrar examines your application to ensure the correct documents have been filed and also your mark does not resemble any registered Trademark. An examination report is then issued, the report will inform you whether your mark has been approved for registration or not. If it has been approved you will be required to pay the advertisement fee and registration fee.
If the Registrar approves the mark for registration he will instruct you to pay an advertisement fee. The mark will then be advertised in the Kenya Industrial Property Institute (KIPI) journal for 60 days to allow any person opposed to the registration of your mark to raise their objection. If no opposition is raised, it proceeds to registration. If an opposition is raised, however, a notice of opposition in the form of Form TM 6 is filed and opposition proceedings begin.
This is the final stage in the registration process, if no opposition is raised upon advertisement, the application will be registered and the Registrar will issue a certificate of registration of Trademark.
Forms for Registration of a Trademark
- Form TM 27 (not mandatory but advisable)
- Form TM 2 – Application for registration of Trademark
- Form TM 32 – Application to enter or alter address of service
- Form TM 1 – For foreign applicants (appointment of agents)
So go ahead and register that mark in Kenya that distinguishes your product, your services from your competitor’s. A good brand name can be an entity’s biggest asset. If you would like to register a trademark in Kenya, please write to the Kenya Industrial Property Institute through firstname.lastname@example.org or reach us through email@example.com for more support and advice. All the best though.