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 In Kenya, trademarks are registered under KIPI – Kenya Intelelctual Property Institute, and the general procedure is as follows:

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.

1. 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 onthe requisite forms accompanied by seven (7) representations of the mark.

1. Examination: Once the Application for registration is received, it then proceeds for examination. The mark will undergo three types of examination:

1. Formality examination:this involves finding out whether the right documents are filed, whether the forms included are properly filled, and the required fees is appropriately paid.
2. Search:A Search is conducted to ascertain that there is no similar or closely resembling mark is on the register, otherwise the present application can be refused on that ground. If there exists a similar mark from the same applicant ordinarily an association is requested.

• Substantive examination:During substantive examination, the mark is examined as to its distinctiveness.

Once the examination is complete KIPI will then communicate to the applicant or the Agent of the approval or disapproval. Incase of approval, the mark proceeds to advertisement. Incase of disapproval, one may appeal against the decision or abandon the application.

1. Advertisement: Once the Application accepted, advertisement is the next step. The Trade mark is advertised in the KIPI Journal (which is published monthly). This is to allow any interested party an opportunity to raise objections to the pending application prior to registration.

1. Opposition: Any aggrieved party with valid grounds may oppose the registration of a trade mark so advertised in the Kenya Gazette. An opposition must be made within 60 days of the publication date, by filing a statement of opposition.

1. Registration: If there is no opposition to the trade mark after the statutory 60 days period from the date of advertisement, or if an opposition has been decided in the applicants favour, the application will be registered and the Institute will issue a Certificate of Registration and enter the registration.

Please however note that despite the lengthy process, the mark is deemed registered as of the date of the application for registration, and that date is deemed to be the date of registration. However pelase note once the Mark goes through the examination stage, another entity cannot then lodge the same mark for registeration. It shall be deemed to be unavailable for registeration for any subsequent entities.

A trade mark registration is valid for ten (10) years from the date of application. Six (6) months prior to the expiry of the ten (10) years, the registrar will notify the owner of the trade mark of the imminent expiry of the concerned trademark. The owner may then apply for a renewal which covers the next ten (10) years and the renewal can continue every ten (10) years thereafter upon payment of the requisite renewal fee.

 

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Should you be interested in working with us, please contact us on enquiries@jradvocates.com for further information.