Intellectual PropertyHow To Register A Trademark In Kenya.

09/06/2022

What is a Trademark?

Before learning how to register a trademark in Kenya, everyone needs to first know what a trademark is. A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company. Its cradle dates back to ancient times when craftsmen reproduced their “marks”, on their artistic works or products of a functional or practical nature. With time, these marks have evolved into today’s system of trademark registration and protection.

The system helps consumers to identify and purchase a product or service based on whether its specific characteristics and quality, as indicated by its unique trademark, meet their needs.

How to Register a Trademark in Kenya.

In Kenya, trademark registration is carried out by the Kenya Industrial Property Institute in accordance with the provisions of the Trademark Act Cap 506, Laws of Kenya, and the procedure begins with a preliminary search. The search is carried out to find out whether the desired trademark is registerable or not and also whether there exists in the records, a trademark that could be confused with the intended trademark.

A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company. Its cradle dates back to ancient times when craftsmen reproduced their “marks”, on their artistic works or products of a functional or practical nature.

How much does a trademark registration cost in Kenya?

The said application for search also comes with preliminary advice by the Registrar and is done in the prescribed Form TM 27, as provided for by Rule 20 (1) of the Trademark Rules. First-class trademark registration fees in Kenya are Kshs. 3,000.00 for locals and USD 150. For each subsequent class, Kshs. 2,000.00 for locals and USD 100. Please note that these are the official government fees and do not include legal fees, and are consequently subject to legislative amendment.

Anyone claiming to be the proprietor of a trademark, used or proposed to be used by him/herself, and who is desirous of registering the said trademark should apply to the Registrar on form TM 2 accompanied by seven (7) representations of the mark. Application fees, in the first class for locals, are Kshs. 4,000.00 and USD 200 for foreigners.

Each subsequent class is Kshs. 3,000.00 for locals and USD 150 for foreigners. It is also important to note that an applicant who ordinarily resides outside Kenya or has a principal place of business outside Kenya, ought to be represented by a trademark agent, as stipulated under Section 63 of the Trademark Act.  The said application should further be accompanied by the form of authorization Form TM 1.

The local fee for appointing an agent, under rule 14(2) of the Trademark Regulations is Kshs. 1,000.00, to act in a proceeding or matter before or affecting the Registrar, while USD 50 is the payable fee for foreigners.

Another form that should accompany the application is known as form TM 32, for entry of the address of service in Kenya, and the same has no fee. The applicant is required to file a separate application for each mark in each different class.

Can A Business Register an International Trademark in Kenya?

Registration of trademark in Kenya that covers international marks is governed by the Madrid system. This arises from the fact that Kenya is a party to both the Madrid Agreement concerning the International Registration of Marks and The Madrid Protocol that consequently forms the Madrid System.

This system supports whoever desires to internationally register a trademark throughout the lifecycle of the said trademark; from application all the way to renewal.

Registration in the Madrid system begins with carrying out a search before filing an international application. The search is carried out to find out if identical or similar marks already exist in one’s target markets. This is done by searching the World Intellectual Property System (WIPO)’s Grand Brand Database.

Next, in order to file an international application, you must have already registered or applied for a mark in your “home” IP office in this case, Kenya, and through KIPI. The “home” IP office then certifies the international application and forwards it to WIPO.

In turn, WIPO carries out a formal examination, registers the mark in the International Register, and publishes the international registration in the Gazette. It then issues a Certificate of Registration and notifies the designated contracting parties.

Registration of trademark in Kenya that covers international marks is governed by the Madrid system. This arises from the fact that Kenya is a party to both the Madrid Agreement concerning the International Registration of Marks and The Madrid Protocol that consequently forms the Madrid System.

In so far as fees are concerned, the Madrid system provides a single fee that covers all countries at once. The fee is accessed through a fees calculator that calculates fees that vary per country, due to each country’s basic fee of trademark registration and the fee for the contracting state.

Registration of trademarks provides priority over all others who might seek to adopt the registered mark. It significantly reduces the costs of enforcing trademark rights and provides for enhanced protection against counterfeiters, cyber squatters, and importers of infringing products.

Registration also provides various other advantages, including qualifying the trademark owner for participation in programs available in online sales programs and as a basis for registration of the trademark in other countries.

With so many benefits, trademark registration is undoubtedly one of the most important steps a business should take to protect its brand.

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].

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