Why and how to register a trademark in Kenya

The rights to a trademark in Kenya are granted to the person or company that first uses it in this territory. Although registration is not mandatory, in practice it is highly recommended in order to demonstrate clear ownership, prevent future conflicts regarding ownership of the trademark and in order to defend against cases of trademark infringement. The trademark applications must be filed with the Kenya Industrial Property Institute (KIPI).

Kenya is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

It is not necessary for a trademark to be in use in Kenya in order for it to register. However, prior use may be useful as it can help overcome an objection raised on the grounds of lack of distinctiveness, by proving that the trademark has acquired distinctiveness.

Please note that by default, applications including a logo will be filed without color claim. This allows the trademark holder to use it in any combination of color. Upon request it is possible to claim color as a feature of the trademark. This will restrict its use to the colors claimed in the trademark application.

If you register a combined trademark (which includes both word elements and figurative elements) in Kenya, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.

Opposition actions may be filed by interested third parties against a trademark application within a period of sixty (60) days following its publication in the Industrial Property Journal of Kenya. In certain circumstances, extensions of time of up to 90 days can be obtained by the opponent. The probabilities of success for an opposition will vary in each case depending on the circumstances.

Although a trademark does not have to be in use in order for it to register, it must not go unused for more than five years after registration or it will become vulnerable to cancellation actions based on lack of use of the trademark.

Registered trademarks in Kenya have a validity of ten (10) years from the application date and can be renewed indefinitely for further periods of ten (10) years. The trademark renewal can be requested as early as ninety (90) days before the expiration date. It can also be requested during the grace period of one (1) month after the expiration of the trademark has been advertised in the Industrial Property Journal, upon payment of a late renewal fee.

If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Kenya (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.

 

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