Interplay Between Trademark and Business Name Registration Rights in Kenya

If running a business or contemplating on starting one, it is always recommendable to register the business with the Business Registration Service whether by registering the business name if operating a sole proprietorship or by registering a company, partnership or a limited liability partnership

There are various benefits associated with the various business vehicles. However, one of the most important benefits is that registering your business name is that it helps to identify your business and the legal entity that owns the business will use the business name to promote the business.

The business name does not however protect the products of the owner. For this reason, it is important to also register a trademark. This is because a trademark protects the products or services of the owner and helps to distinguish such products or services from other products or services in the marketplace.

A trademark is a word, symbol, design or a combination of these that identifies and distinguishes the source of the goods of one party from those of others. 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 can be trademarked.

In addition to registering your business name, you may take a further step to register a trademark in respect of your products. Registering a trademark prevents third parties from using your mark for their products.

The challenges associated with tradenames and trademarks is mostly associated where their registration are conflicting. This is where for instance party A registers a business name for example ‘apple’ and then party B registers a trademark with the same word ‘apple’ this creates conflicting rights over the name ‘apple’.

Registration of trademarks and business names are undertaken by two independent entities that is the Kenya Industrial Property (KIPI) and the Companies Registry respectively. As the two bodies are independent of each other, none of the bodies checks with the other body on the availability of a name before it is registered and this is the origin of the conflicting rights in the business names and trademarks.

The High Court of Kenya has since provided legal guidance on the criteria to be adopted in determining which registration rights will take precedence over the other in the case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 others [2019] eKLR

HOW WE CAN HELP

At CM SME Club, we will assist you in registration of your business and give you legal advisory on whether your inventions meet the threshold for registrability as a Trademark and/or other related rights. Talk to us today via email or call +254 745 342 125.

Published on Aug. 22, 2024, 1:10 p.m.