What is a Trademark? 

A trademark is a distinctive sign or indicator used by an individual, business organization, or legal entity to identify and distinguish its goods or services from those of others. It serves as a mark of origin, ensuring that consumers can recognize the source of the products or services they purchase. 

In Kenya, trademarks are regulated by the Trademarks Act Cap 506 “the Act”.  

Registrability of trademarks  

Section 12 of the Act provides that in order for a trademark (other than a certification trademark) to be registrable, it must contain or consist of at least one of the following essential particulars: - 

The key requirement noted in the above factors of determination is distinctiveness. 

Process of Trademark Registration in Kenya 

Although trademark registration is not mandatory, it is highly recommended. 

A preliminary search is conducted to determine whether the mark is available for registration and to ensure it is sufficiently distinct from existing marks.  

The request for a preliminary search must be submitted using the prescribed form. If the mark is found to be available, a formal application for its registration is then filed, also in the prescribed form. 

Once the application is lodged with the Registrar of Trade Marks, the mark will be examined to determine whether it meets the statutory criteria for registration. After examination, the Registrar may refuse the application, accept it absolutely, or accept it subject to amendments, disclaimers, modifications, conditions, or limitations. If the Registrar objects to the application, they will inform the applicant of their refusal. 

After the application for registration of a trademark has been accepted, the Registrar must advertise the application in the Kenya Industrial Property Journal. The advertisement will set forth all conditions and limitations subject to which the application has been accepted. 

Within sixty (60) days from the date of advertisement, any person may give the Registrar notice of opposition to the registration of the advertised trademark. 

If there is no opposition to the registration, the Registrar will enter the trademark in the register and issue a certificate of registration.  

Timelines for validity of the registered trademark 

A registered trademark in Kenya is protected for a period of 10 years from the date of registration in Kenya. At a prescribed period prior to the expiry of the 10 years, the Registrar shall notify the trademark owners in writing of the impending expiry date. The owner may thereafter apply for the renewal of the trademark subject to payment of the applicable fees which covers 10 additional years. 

In making its determination, the Registrar will consider whether the conditions (if any) that were prescribed have been complied with.   

Unregistered Trademarks 

Section 5 of the Act provides that no legal action can be brought for infringement of an unregistered trademark. Under Common law however, unregistered trademarks may be enforced through a passing-off action. In a passing-off action, the owner of the unregistered mark must prove that the trademark in question has acquired sufficient reputation through use by the public.  

Unregistered trademarks are also protected under Section 15A of the Trademarks Act upon sufficient proof of their reputation and well-known status in Kenya. The proprietor can restrain the use of identical or similar trade marks in Kenya if it causes confusion among users. A trade mark further cannot be registered if it impairs or takes unfair advantage of the well-known trademark. 

Conclusion 

The registration of a trademark in Kenya is a crucial step for any individual, business, or organization seeking to protect its brand identity and distinguish its goods or services in the marketplace. Governed by the Trademarks Act, Cap 506, the process ensures that only distinctive marks that meet specific statutory requirements are granted protection. While registration is not mandatory, it provides significant legal advantages, including exclusive rights to the mark and the ability to enforce these rights through infringement proceedings. It is therefore highly advisable for proprietors to undertake the registration process to secure their brand.  

What We Do at the CM SME Club 

At the CM SME Club, we are committed to empowering small and medium-sized enterprises by providing expert guidance on trademark registration and brand protection in Kenya. We assist our members throughout the entire trademark process as highlighted above.   

We understand that a strong brand is a critical asset for SMEs. Our services also cover trademark renewals and protection of unregistered marks through common law remedies such as passing-off. By ensuring that your brand is properly registered and safeguarded, we help position your business for market recognition and sustainable growth. 

At the CM SME Club, we believe that every SME deserves access to high-quality legal support to secure and strengthen their competitive advantage. 

For any inquiries visit our website at www.cmsmeclub.com or contact our contributor at aonderi@cmadvocates.com.