Recap and Introduction

In our last episode of the trademark series, we covered registrable trademarks as well as who is allowed to register a trademark. Find our last episode here. In this series, we take you through the registration process.

The Trademark Registration Process

The process of registering a trademark in Kenya involves several steps, from conducting a preliminary search to the actual registration and publication of the trademark. Below is a detailed overview of each step.

1. Preliminary Trademark Search

Before filing an application, conducting a preliminary search at KIPI is advisable to ensure that the trademark is not identical or similar to existing trademarks. Although not mandatory, this search helps avoid potential conflicts and increases the likelihood of successful registration. There are two types of searches: the personal search and the official search. A personal search is conducted by an individual through the KIPI database, while an official search is done by officials at the Trademarks registry. Once they have done the search, they issue a formal report.

2. Filing the Trademark Application

Once the preliminary search is completed, the next step is to complete a prescribed application form known as Form TM2 (Application for Registration of a Trade Mark) and to file the trademark application together with the requisite application fees with the Kenya Industrial Property Institute (KIPI). The application should include:

• Name and address of the applicant: The individual or entity seeking to register the trademark.
• Representation of the trademark: A clear depiction of the mark, which could be a logo, word, symbol, or combination.
• List of goods or services: The specific goods or services for which the trademark will be used are categorized according to the Nice Classification system. Nice Classification refers to the International Classification of Goods and Services in accordance with the Nice Agreement of 15^th June 1957. The Nice Agreement establishes a system for the classification of goods and services for trademark registration.
• Class of registration: The trademark must be classified under one or more of the 45 classes of goods and services recognized internationally. These classes are provided for in the Nice Classification. Class one, for instance, contains inter alia, Chemicals for use in industry, science, agriculture, and photography, while class 2 contains paints, preservatives, dyes, inks for printing, etc. See the 12th edition of the Nice classification.
• Declaration of use: A statement indicating that the applicant intends to use the trademark in Kenya.

It is worth noting that the critical requirement for trademark registration is the distinctiveness and uniqueness of the trademark.

3. Examination of the Application

Upon receiving the application, KIPI conducts a formal examination to ensure that all necessary documents are in order and that the application complies with legal requirements. The application also undergoes a substantive examination to assess whether the trademark is distinctive and registrable.

If the application meets all the criteria, it will proceed to the next stage. If there are issues, KIPI may issue an office action requesting the applicant to address specific concerns.

4. Advertisement in the Kenya Industrial Property Journal

If the trademark application passes the examination stage, it is published in the Kenya Industrial Property Journal.

The publication serves as a notice to the public, allowing third parties to oppose trademark registration. The opposition period lasts for 60 days from the date of publication.

5. Opposition Proceedings (if any)

During the opposition period, any person who believes that the trademark registration would be detrimental to their rights may file an opposition with KIPI. If an opposition is filed, the applicant is given an opportunity to respond, and KIPI will review the evidence and make a determination. If the opposition is unsuccessful or no opposition is filed, the application proceeds to registration.

6. Registration and Issuance of the Certificate

Once the opposition period has passed without any opposition, or after a successful defense against opposition, KIPI will proceed to register the trademark. The applicant is then issued a Certificate of Registration, which serves as official recognition of the trademark’s legal status. The registration date is backdated to the filing date of the application, and the trademark is protected for an initial period of 10 years.

7. Renewal of Trademark Registration

Trademarks in Kenya are valid for 10 years from the date of registration. After this period, the trademark can be renewed indefinitely for successive periods of 10 years, provided the renewal fees are paid. The renewal process must be initiated within six months before the expiration of the current registration period. Failure to renew a trademark can result in its removal from the register, although there is a grace period during which the trademark can be restored upon payment of additional fees.

Conclusion

Trademark registration is so essential for any company, organisation or individual dealing in goods or services. This simplified registration process is intended to help anyone who, either would like to register a trademark or learn the process of registration.

In our next episode, we guide you through the international trade mark registration process. Stay tuned.