Intellectual PropertyHow To Maintain A Portfolio Of Trademarks

11/06/2022

So you have registered a trademark using our legal services? What next? This is how to maintain a portfolio of trademarks.

How to maintain a portfolio of Trademarks

Maintaining a portfolio of trademarks can be done by tracking the Intellectual property journal that is released by the Kenya Industrial Property Institute every month. The purpose is to ensure that only a registered trademark is in use and the said mark is not being used by another person or company illegally.

Maintenance of portfolio for Trade Marks can be maintained through renewal. Renewal of Trade Marks is done every 10 years.

Trademark registration is valid for ten (10) years from the date of application. Within six months of the expiry of the mark, the Registrar of Trademark notifies the owner of the said trademark of the impending expiry.

Furthermore, maintenance can be done through the recordation of the respective trademark.

Section 34 of the Trade Marks Act read with the Trade Marks Rules of 2010 provides that a trademark proprietor may apply to the Anti Counterfeit Authority for recordation of trademarks for which there is a deadline for recordation until 1st January 2023.

Maintenance of a portfolio for trademarks can also be done by ensuring that the registered trademark is in use. This is because, once a trademark is registered, any person may apply for its removal from the register if the trademark has not been in use for a continuous period of 5 years.

Trademark surveillance can also be used in the maintenance of a portfolio of trademarks. This is whereby, a company or an individual like a lawyer can scour the web to check on any illegalities with their respective trademarks.

How To Maintain a portfolio of Trademarks Under Various Protocols/Treaties That Kenya is a Party

An owner of a trademark in Kenya or internationally can learn how to maintain a portfolio of trademarks by understanding the international laws, protocols, and treaties that Kenya is a party to.

Kenya is a member of the Madrid System which allows for the registration of trademarks in up to 70 countries that are party to the system.

The principal advantage of using the Madrid System is that the trademark owner can protect their own trademark in all the countries party to the system by filing: a single international application in one language and subject to the fees and deadlines.

The Madrid system is a convenient and cost-effective solution for registering and managing trademarks worldwide. Kenya joined the Madrid Union in 1998. The Madrid Protocol and Madrid agreement creates the Madrid system which is used to register Trade marks intentionally.

Kenya was among the founding members of the World Trade Organization (WTO) when the Marrakesh Agreement was signed in Morocco on 15th April 1994.

The notification process was completed by 31st December 1994, when accession to the WTO was completed. As a member, Kenya is a signatory to all WTO agreements including the agreement on Trade-Related Intellectual Property Rights (TRIPS).

With the creation of the World Trade Organization (WTO), the coming into force of the TRIPS agreement, all members of WTO were required to revise their national patent laws so as to conform to the requirements of TRIPS and WIPO guidelines.

The TRIPS agreement introduced global minimum standards for protecting and enforcing all forms of Intellectual property rights (IPR). The TRIPS agreement now requires all WTO members, with few exceptions, to adapt their laws to the minimum standards of IPR protection.

Kenya being party to this agreement has to comply with these standards by modifying, where necessary, their national regulations to accord with the rules of the agreement.

Find out more about what Intellectual Property legal services can be offered to you or your business, by contacting our law practice at +254 20 2100 999 or email us at [email protected].

Book an Appointment today.

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