Introduction

Transformation refers to the process by which a canceled international trademark registration, usually due to the cancellation of the basic mark within five years, can be converted into a national or regional trademark registration.

Under the Madrid System, the protection arising from an international registration remains dependent on the basic application or registration (the “home application”) for a period of five years from the date of international registration. Consequently, if the home application is refused or canceled during this dependency period, all corresponding international registrations based on it are similarly refused or canceled.

The transformation mechanism provides trademark holders with an opportunity to preserve their rights in individual member states despite the cancellation of the international registration.

Transformation is, however, not available in the following circumstances:

•  When the international trademark registration has been canceled at the request of the holder.
• When the holder fails to renew the registration.
• When the trademark holder voluntarily removes registered goods and/or services from international registration.

The application for transformation has to be filed in the home country within three months of the cancellation of the international registration. An application for transformation of an international trademark registration can only be brought either by the trademark holder or his or her duly authorised agent.

Eligibility for making a transformation application in Kenya

According to the Trademark (International Registration) Rules 2003, an applicant can only make an application for transformation of an international trademark registration if, before cancellation:

1. The protection of the trademark was extended to Kenya;
2. The extension of the protection of the trade mark to Kenya was requested and had not been refused but the time for giving notification of such a refusal under the applicable treaty had not expired; or
3. The extension of protection of the trade mark to Kenya was requested and refused but the proprietor’s remedies to challenge that refusal had not yet been exhausted.

An application that satisfies the above conditions can apply for a transformation with the registrar of trademarks by filing Form TM (International) 1.

An applicant whose application for extension of international trademark registration to Kenya had been partially rejected is entitled to automatic transformation of his or her international trademark registration into national registration. The applicant has to, however, first make an application for transformation with the trademark registrar.

Effects of transformation

Upon successful transformation, the trademark enjoys the same rights and protection as if it had been originally filed and registered under the Trade Marks Act (Cap. 506), subject to any limitations arising from the international registration.

Conclusion

The transformation mechanism ensures that trademark proprietors do not lose protection in Kenya due to the cancellation of their international registration, particularly when such cancellation arises from events beyond their control, such as the lapse of the home registration. For foreign brands, transformation provides a safeguard for continuity of rights and market presence in Kenya without requiring a new filing from scratch.