Recap and introduction
Last week, we covered various kinds of marks that cannot be trademarked. These include representations of the Head of State of any foreign state, or any colourable imitation, armorial bearing, insignia or flag of any foreign state or international intergovernmental organization and title or abbreviation of any international intergovernmental organization, among others. Read our last episode here.
Today, we discuss the requirements for registration of trademarks, those who can register trademarks and prohibited trademarks.
What is a “trade mark” in Kenyan law?
A trademark is a distinctive sign which distinguishes the goods or services produced or provided by one enterprise from those of another. The sign may consist of one or more distinctive words, letters, numbers, drawings or pictures, monograms, signatures, colours or a combination of colours, etc.
Trademark registration grants an entity a myriad of benefits, including ensuring that consumers distinguish their products, the right to initiate infringement claims, brand image and reputation, among others. While not mandatory, it is advisable that every entity registers its trademarks to enjoy the accruing benefits. This will require an understanding of the various kinds of trademarks that are registrable under the Kenyan law.
What is registrable as a trademark?
A trademark can only be registered in respect of a particular good or service. For instance, a sugarcane juice vendor can only register a trademark in respect of the sugarcane juice. He or she cannot register a trademark for more goods, say sugarcane juice, fruit vending, etc.
In order for a trademark (other than a certified trademark to be registrable, it must contain or consist of at least one of the following essential particulars as stipulated in Section 12 of the Act. These are;
- the name of a company, individual or firm, represented in a special or particular manner;
- the signature of the applicant for registration or some predecessor in his business;
- an invented word or invented words;
- a word or words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or a surname;
- any other distinctive mark.
In addition to the above requirements, a trademark must be distinctive to qualify for registration. The mark must be able to identify or distinguish the good or service to be trademarked. A mark that is purely generic or descriptive does not satisfy the distinctive requirement and is therefore not eligible for registration.
Section 12(2) of the Trademark Act defines distinctive to mean a mark that is adapted to distinguish goods or services with which the proprietor of the trademark is or may be connected, either trademarked or to be trademarked, from goods or services of which he or she is not connected.
The act allows either the court or the trademark registrar to consider the following in determining whether a trademark is adapted to distinguish:
- The extent to which the trade mark is inherently capable of distinguishing;
- The extent to which, by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing.
Prohibited trademarks
Section 14 of the Act prohibits the registration of the following trademarks:
- Any mark likely to deceive or cause confusion;
- A mark that would be disentitled to protection in a court of law;
- A mark contrary to the law or morality;
- Scandalous design.
Who can register a trademark in Kenya?
Any person who intends to use a trademark or to have it used by third parties can apply for registration. That person can be either a natural person or a legal entity.
Conclusion
Trademark registration is necessary for various reasons discussed above, including distinguishing an entity’s goods or services from those of another. While not mandatory, it is advisable that you register your trademark. This will require satisfying the registration requirements, including distinctiveness and ensuring that the particular mark is not prohibited.
Next week, we will take you through the registration process. Stay tuned.
