1. Introduction
In the Kenyan business environment, particularly within fast-growing SME sectors such as retail, agri-business, fintech, hospitality, and professional services, brand identity is a key driver of consumer trust and commercial success. A trademark, whether a business name, logo, slogan, or trade dress, serves as the legal signifier linking goods or services to a particular source.
Under the Trade Marks Act (Cap 506), trademarks are recognised as proprietary rights capable of ownership, commercial exploitation, and enforcement. However, many Kenyan SMEs treat trademarks as a marketing consideration rather than a legal asset, continuing to expose themselves to avoidable legal and commercial risks due to inadequate trademark protection strategies. This often results in loss of brand control, costly disputes, or forced rebranding.
This article provides a detailed examination of the most common trademark mistakes made by SMEs in Kenya and outlines practical safeguards to mitigate these risks within the existing legal framework.
Common trademark-related mistakes by SMEs
- Treating Business Name or Company Registration as Trademark Protection
Many SMEs assume that registering a business name or company name with the business registration service (BRS) or the registrar of companies, respectively, confers exclusive rights to use that name as a brand.
Registration under the Companies Act, 2015, or the Registration of Business Names Act only confers legal personality or recognition for administrative purposes. It does not grant proprietary rights over a name as a trademark. Trademark protection is governed exclusively by the Trade Marks Act (Cap 506) and its attendant regulations, and administered by the Kenya Industrial Property Institute.
Practical guidance
SMEs should ensure that any name or logo used to identify goods or services in the marketplace is separately registered as a trademark with KIPI, even where the business name is already registered with BRS.
- Delayed Trademark Registration
SMEs often delay trademark registration until their business is established, primarily due to perceived costs or the assumption that trademark protection is unnecessary in the early stages of the business.
This delay can be very costly as the Kenyan trademark regime operates largely on a first-to-file system. This basically implies that a third party who registers your trademark before you get exclusive trademark protection to your detriment. Defeating such trademark registration can be tedious and may only succeed in very few exceptional circumstances. In simple terms, delay in registering may cost you your brand name, logo, slogan, mark, etc. This also has a lot of business implications, limiting your brand marketing and even sales.
Practical safeguard
Trademark registration should be integrated into start-up compliance and early business planning. SMEs should prioritise registering core brands before or immediately after market entry or public launch. Do not delay.
- Failure to Conduct Comprehensive Trademark Searches at KIPI
Some SMEs file trademark applications without conducting prior availability searches at KIPI. This is probably done on the assumption that originality or novelty guarantees registrability.
However, under sections 14 & 15 of the Trade Marks Act, a mark that is identical or confusingly similar to an existing registered mark may be:
- Rejected by the Registrar; or
- Opposed by third parties during the publication stage; or
- Invalidated after registration.
This exposes SMEs to wasted filing fees, delays, and potential infringement claims.
Practical safeguard
Before filing, SMEs should conduct:
- Official trademark searches at KIPI; and
- Broader market checks for unregistered but well-known marks.
Professional assessment of similarity, visual, phonetic, and conceptual, is strongly advised.
- Adopting Non-Distinctive or Descriptive Marks
SMEs frequently adopt marks that directly describe their goods or services, such as quality, geographical origin, or function. However, distinctiveness is an essential requirement in trademark registration. Whatever the mark, sign, brand name, or slogan you submit for trademark registration must be able to easily distinguish your goods or services from those of competing players in the market. Your trademark has to not only stand out but also be unique; anything less would defeat the purpose of trademark registration in the first place.
Why does distinctiveness matter
- Recognition: A distinctive trademark makes it easy for consumers to recognize your product among the sea of competitors. Distinctiveness helps build brand loyalty. If people know it is you, they will keep coming back.
- Legal Protection: A distinctive trademark is eligible for legal protection, meaning that one can enforce against any unauthorized use of the trademark.
- The Creative Touch: Creating a distinctive trademark gives you the freedom to express your brand’s personality. It’s a chance to be creative.
Practical safeguard
Avoid generic terms, say tables or shoes, and choose a unique mark. Simply put, be creative when coming up with marks.
- weak enforcement mechanisms and failure to monitor the market
Most small businesses and SMEs operate under the impression that trademark registration alone suffices to protect brands and shield them from infringers. However, registration alone does not guarantee brand protection; you have to consistently monitor the market and take appropriate enforcement measures, if and when necessary.
Practical safeguard
Constantly monitor the market and aggressively defend your registered marks, if and when necessary.
- Informal Licensing, Franchising, or Assignment of Trademarks
As SMEs scale, trademarks are often shared with distributors, franchisees, or partners without formal agreements, usually on agreements backed by friendships. However, in business and by extension in trademark protection, friendship alone does not suffice. Every business transaction, including trademark licensing and assignments, needs to be formalised.
Practical safeguards
Any trademark assignment, licensing, or franchising should be in writing, properly signed, and registered with the appropriate authority. You don’t want to leave the fate of your business to the fate of friendships.
9. Conclusion
For Kenyan SMEs, trademarks are critical legal and commercial assets. Common mistakes, such as delayed registration, poor classification, and weak enforcement, can undermine business growth and expose enterprises to significant legal risk.
By adopting a proactive trademark protection strategy aligned with Kenya’s legal framework, SMEs can secure their brands, enhance market credibility, and support long-term sustainability.
