What is a Trademark?
A Trade Mark is a sign which serves to distinguish the goods of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colors or combination of colors etc. The sign may consist also of combinations of any of the said elements
A Trade Mark can be a word, a symbol, a design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the market place. The Trademarks Act (Cap 506) 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.
Why register a Trademark?
Registration of a trade mark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempted to ride on the goodwill of your mark. It enables you to more easily protect your rights more easily in case someone challenged them since the burden is on the challenger to prove any rights in a dispute.
The process of registration with its thorough checks for conflicting trademarks ensures that you have a unique mark that does not resemble any other parties mark and in so doing helps one avoid infringement of other parties’ rights.
Here we should also add that registration is not mandatory, using a mark for a certain length of time can establish your ownership through Common Law-but it is highly advisable to register a trade mark.
Registration is direct evidence of one’s ownership and enables you to more easily protect your rights, should someone challenge them. In a dispute, the burden is on the challenger of the registered trade mark to prove ownership.
Use of an unregistered trade mark can lead to a lengthy, expensive legal dispute over who has the right to use it. A registered trade mark is also a valuable asset for business expansion especially so through licensing franchises.
Essentials of a Trademark
In order for a trade mark (other than a certification trade mark) to be registrable, it must contain or consist of at least one of the following essential particulars-
1. The name of a company, individual or firm, represented in a special or particular manner;
2. The signature of the applicant or some predecessor in his business;
3. An invented word or invented words;
4. 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;
5. Any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in paragraphs (1), (2), (3) and (4) above , cannot be considered registrable except upon evidence of its distinctiveness
Trademark Registration Procedure
1. Name Search
Before applying for the registration of a trade mark, 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 which could be confused with the intended trade mark.
An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on FORM TM 27
Request for search kshs2000 (1st Class) and kshs1000 (each subsequent class)
Preliminary advice kshs3000 (1st Class) and kshs2000 (each subsequent class)
Search is not mandatory but is advisable for the following two reasons;
It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in its present form.
It will also help one avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.
2. Application for registration
A person claiming to be the proprietor of a trade mark, used or proposed to be used by him, and who is desirous of registering it should apply to the Registrar on FORM TM 2 accompanied by seven (7)representations of the mark.
kshs4000 (1st Class) and kshs3000 (each subsequent class)
Foreign applicants are required to file through an agent and thus the application should be accompanied by the form of authorization FORM TM 1 or the power of attorney duly completed and signed and must have a duty stamp affixed on it.
Appointing an agent kshs1000
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.
Source: Kenya Industrial Property Institute (KIPI)