When developing a product, one of your key focuses should always be on creating and developing a distinctive name, logo, and slogan to distinguish your product from others already in the market. As a result of such choices, you are able to establish your company’s brand and also create a strong customer base. While creating these elements is important for effectively marketing a product or service to consumers, it is equally important to obtain Trade Mark protection for them.
Trade Marks are a part of the family of Intellectual Property Rights which by nature are inherently negative rights. Once granted, they prevent third parties from using your registered IP without your consent or authorization. When obtained, such protection can be enforced not only in the jurisdiction where you sell your products or services, but also in other jurisdictions subject to the laws of each country.
This article aims to briefly discuss how the provisions of the Trade Mark Act of Kenya can be used to protect your foreign registered Trade Mark. This discussion is important in light of the latest efforts by organizers in Kenya to profit off of the name and reputation of the infamous Nyege Nyege Festival held in Uganda last year. It will provide basic information that you, as the owner of a foreign registered Trade Mark can use as a starting point even as you engage with legal professionals to determine the best course of action regarding Trade Mark Protection in Kenya.
General overview of Trade Marks
A Trade Mark is a mark intended for use by an individual or business to distinguish their goods and services from those of others. For a mark to be registered, it must be distinctive, distinguishable, and capable of being rendered in either 2D or 3D . The mark can include a logo, slogan, brand, heading, label, ticket, name, signature, word, letter, numeral, or a combination of any of the above.
There are generally two forms of trademarks: registered and unregistered Trade Marks. Trade Marks are territorial therefore the best way to garner protection is to register them with the relevant office in a specific country.
There are generally two forms of trademarks: registered and unregistered Trade Marks. Trade Marks are territorial therefore the best way to garner protection is to register them with the relevant office in a specific country.
In Kenya, that would be the Kenya Industrial Property Institute (KIPI). Once registered, the proprietor of the registered Trade Mark gains the right to exclusively use the trademark in relation to the goods and/or services for which it is registered. This includes the assignment, transmission, and hypothecation of the mark. The protection lasts for a period of 10 years and is renewable.
If the mark is unregistered, the proprietor may come under the principle of passing off. Passing off occurs when a trader falsely represents that its goods or services are connected to another trader, who has established goodwill in a specific product or service line. The misrepresentation is likely to confuse consumers, potentially damaging the trader’s goodwill. This form of protection is not statutorily recognized. Therefore, one would have to file a lawsuit and demonstrate that the elements of passing off have taken place in order to obtain any remedies available in law.
Protection and Enforcement of Foreign Registered Marks in Kenya
There are several ways through which to obtain protection for your foreign registered Trade Mark in Kenya under the Trade Marks Act of Kenya.
The first option would be for you as the owner of the foreign mark, to cause fresh registration of the mark with the relevant authority in Kenya, without relying on the prior registration in your country of origin. You can either apply by yourself or through an authorized agent by completing the necessary forms and providing the required samples. Upon successful registration, as the owner of the mark, you would be entitled to all the rights and remedies provided under the Trade Marks Act.
The second option is to come under Section 15A which acknowledges well-known foreign trademarks. As there is no provision for the registration of well-known marks, as the proprietor of a foreign mark, you can only rely on this section for enforcement in certain instances. These situations include opposing a trade mark registration application or seeking the cancellation of a trade mark that has substantially copied your well-known mark. In either instance, one would need to demonstrate to the Registrar or the Court that their mark is well-known to the standard required. The only recourse under the Act in the event of infringement is an injunction order.
The third way is through Section 65 of the Trade Marks Act which allows the owner of a trade mark registered in any other country that has mutual protection arrangements for trademarks with Kenya to apply for and obtain trade mark protection in Kenya on the basis of the prior application or protection. The prior application and/or registration of the mark in the foreign nation entitles you to priority in registering the trade mark in Kenya over other applications for a similar mark. This, however, must be made within six months of the application or registration being made in the country of origin. This would be useful for individuals who are citizens of a country that is not a member or contracting party of ARIPO (African Regional Intellectual Property Organization), the Madrid Agreement, or Protocol, but has an agreement with Kenya for the mutual protection of Trade Marks.
The fourth way is through use of the Banjul Protocol. The owner of a registered Trade Mark for example in Uganda, can apply for trademark protection in ARIPO member states, including Kenya, through a single application. This would require submitting a trademark application using the prescribed forms, either by yourself or through an appointed agent. The application is then lodged vide the industrial property law office of the country of origin or directly to ARIPO itself. Kenya has recognized ARIPO trademarks through Section 40D of the Trade Marks Act. As a result, such a mark shall receive the same level of protection as a trademark registered under the Trademarks Act. An application for protection does not require you to have obtained Trade Mark protection in your country of origin.
The fifth way is through the Madrid Agreement and the Madrid Protocol. As long as you are a national of a contracting party to either the protocol or agreement, and have already obtained Trade Mark protection in your country of origin. This international registration system allows Trade Mark holders to apply for and obtain Trade Mark protection in multiple countries through a single application.
Conclusion:
It is possible to protect and enforce a foreign registered Trade Mark in Kenya although in some cases, it may be necessary to file a lawsuit to enforce such protection. The downside of lawsuits is that even if you are successful, any award given by the court can only be effected against the particular infringer you have sued. It cannot prevent future potential infringers from trying to register similar marks or even registering confusingly similar trademarks.
Disclaimer: This blog article is purely meant for educational discussion of legal products and issues. It contains only general information about legal matters.It is not legal advice and should not be treated as such. You must not rely on the information on this website as an alternative to legal advice from your advocate/lawyer or other professional legal services provider. If you have any specific questions about any legal matter you should consult your advocate/lawyer or other professional legal services provider.