Introduction

Trademarks are some of the most valuable intangible assets a business can possess. They encapsulate a company’s reputation, goodwill, and market identity, enabling consumers to distinguish the goods or services of one undertaking from those of another. In Kenya’s increasingly competitive commercial environment, the transfer of trademarks, either by transmission or assignment, plays a central role in facilitating business transactions, restructuring corporate entities, and monetising intellectual property. The legal framework governing such transfers is principally set out in the Trade Marks Act (Cap. 506) and the accompanying Trade Marks Rules, which collectively ensure that trademark assignments occur in a transparent, orderly, and enforceable manner.

A trademark assignment refers to the deliberate transfer of legal ownership of a registered mark or a pending application from one party (the assignor) to another (the assignee). Section 27 of the Trade Marks Act allows a proprietor of a registered trademark to assign the trademark. The transfer or assignment is, however, subject to any other rights over the trademark vested in any other person. Basically, if more than one person or entity has rights over the trademark, an assignee or a transferee of a trademark acquires only the interest of the transferor or the assignor of the trademark.

Transmission, on the other hand, refers to the transfer of a trademark by operation of the law, such as through inheritance or bankruptcy. Unlike assignments, transmissions do not require deliberate action by the owner but still require registration to perfect title and ensure enforceability.

Types of assignment of trademarks

There are various forms of assignment of trademark, including:

• Full assignment – This involves the transfer of all rights and interests in the trademark to the assignee. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage, and receive royalties. No approval from ‘X’ is required in this case.
• Partial assignment – This allows the transfer of rights in a trademark with respect to only some of the goods or services for which it is registered. For example, if proprietor ‘X’ has a trademark related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.
• Assignment with goodwill –  This refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.
• Assignment without goodwill –  This involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Requirements for the assignment of trademarks

The statutory right of assignment reflects the recognition that trademarks are commercial property that may be transferred like other proprietary interests. However, the Act also places necessary safeguards to prevent misuse and ensure clarity in the chain of title. For an assignment of trademark to be valid, it must be:

• The assignment must be in writing – This ensures certainty of intention and reduces the risk of fraudulent transfers or disputes over ownership.
• The assignment instrument must clearly set out the marks being transferred, the nature of the assignment (full or partial), whether goodwill is included, the consideration, and any limitations relating to goods, services, or territory.
• The ownership changes must be registered with the registrar of trademarks. An assignment or transmission of a trademark has no effect against third parties until it is entered in the Register.
• Assignments involving trademarks protected under the Madrid System for International Registration of Marks must be recorded with both the World Intellectual Property Organisation (WIPO) and the Kenya Industrial Property Institute (KIPI).

Economic significance of trademark transfer

Transfer and assignment of trademarks are commonly used in:

1. Mergers and acquisitions.
2. Corporate restructuring.
3. Joint ventures, franchising, and brand licensing.
4. Establishment of holding companies for IP management.

Conclusion

The transfer and assignment of trademarks in Kenya are fundamental mechanisms that enable economic flexibility, support business growth, and promote market efficiency. The Trade Marks Act (Cap. 506) provides a clear statutory framework requiring assignments to be in writing, allowing both full and partial transfers, permitting assignments with or without goodwill, and mandating recordation for enforceability. When conducted in accordance with these legal requirements, trademark assignments safeguard the integrity of brands, enhance commercial certainty, and contribute to a vibrant, innovation-driven Kenyan economy.

In our next trademark series, we discuss the deed of assignment, the legal document facilitating the transfer of trademarks in Kenya.  Stay tuned.