Recap and introduction

In our previous episode, we introduced trademarks covering, among others, the legal framework and the importance of registration of trademarks. Read last week’s episode here.

This week, we delve into registrability of trademarks, appreciating marks, representations and signs that are not registrable in Kenya. 

Registrable trademarks

Trademark registration in Kenya is governed by the Trademarks Act and its attendant rules and administered by the Kenya Industrial Property Institute (KIPI). 

Trademark registration entitles one to a myriad of benefits, including the right to sue in the event of infringement or violation of the registered trademark. Not all marks are registrable.

Rule 15 of the Trademark Rules lists some marks that are not registrable. The Rules grant the Registrar of Trademarks discretion to refuse to register such or similar marks or representations. These include:

1. The words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “Entered at Stationer’s Hall” or “To counterfeit this is a forgery”, or words to similar effect;
2. Representations of the Head of State of any foreign state, or any colourable imitation;
3. The words “Red Cross”, or “Geneva Cross”, and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours;
4. Without the written permission of the competent authority, any honour or award, or any title or abbreviation of a title thereof, created by the President;
5. Any armorial bearing, insignia or flag of any foreign state or international intergovernmental organization;
6. Any honour or award, or any title or abbreviation of a title thereof, of any foreign state;
7. Any title or abbreviation thereof of any international intergovernmental organization.

There is another category of marks and signs that, despite not being expressly prohibited, the Trademark Rules obligate the registrar of trademarks to require proof of consent from those who are associated with the marks or names intended to be registered. These include;

1. Names or representations of any person who is either dead or alive;
2. Specified emblem, specified likeness or specified name within the meaning of Under section 2 of the National Flag, Emblems and Names Act (Cap. 99), a “specified emblem, specified likeness or specified name” refers to national symbols such as the Coat of Arms and the national flag, likenesses such as portraits of the President or former Presidents, and names associated with the State or its institutions. This means you cannot, for example, put the Kenyan Coat of Arms on company stationery, use the national flag in a drink logo, or brand a detergent as “Harambee Soap” without written permission from the competent authority (usually the Office of the President or a designated ministry). In this case, the rules require written permission from a competent authority. 
3. A representation in any form of the armorial bearings, insignia, orders of chivalry, decorations or flags of any city, borough, town, place, society, body corporate, institution or person. In this case, the registrar is to be furnished with the consent allowing the registration and use of the representation from a competent authority. 

Conclusion

It is not automatic that any sign, mark or representation that one comes up with is eligible for registration as a trademark in Kenya. As seen above, certain marks, symbols etc. are not registrable while others require consent or permission from competent authorities or persons. 

What then are registrable as trademarks in Kenya? In our next episode of the trademark series, we cover what is registrable as a trademark and the requirements for registration of trademarks in Kenya.