Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

	Description	PDF	Word
TM 1	Form of authorization of agent	Tm1	Tm1
TM 2	Application for Registration of a mark	Tm2	Tm2
Tm6	Notice of Opposition of Application	Form Tm6	Form Tm6
TM 10	Application for Renewal of mark	Tm10	Tm10
Tm10a	Certificate of registration of trademark	Form10a	Form10a
Tm14	Request to register Assignment or transmission	Tm14	Tm14
Tm17	Request to alter Trade or Business Address in the register	Tm17	Tm17
Tm19	Application to correct Clerical error in register or to ament document, etc.	Tm19	Tm19
Tm20	Application to change name or description in the register	Tm20	Tm20
Tm 21	Application to surrender Trade Mark fro all Goods and Services	Tm 21	Tm 21
Tm22	Application to surrender Trade Mark for some Goods and Services	Tm22	Tm22
Tm23	Application to ender disclaimer or memorandum in Register	Tm23	Tm23
Tm24	Application to add to or alter registered Trade mark	Tm24	Tm24
Tm25	Application for the Marking ,Expunging or varying of an entry in the register	Tm25	Tm25
Tm26	Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register	Tm26	Tm26
TM 27	Application for search under rule 114/Application for preliminary advice as to distinctiveness.	TM 27	TM 27
Tm30	Request for certificate other than under section 22 of the act	Tm30	Tm30
TM 32	Application to enter or alter address for service	TM 32	TM 32
Tm34	Application for alteration of deposited regulations relating to certification of trademark	Tm34	Tm34
Tm43	Application to adapt Classification so that it is in accordance with section 6(2) of the act		Tm43
Tm44     TM 48	Notice of opposition to application to have classification adapted Application for registration of registered user.	Tm44 Tm48	Tm44
Tm53	Application for extension of Time	Tm53	Tm53
Tm54	Order form for copy of document	Tm54	Tm54
Tm55	Application to add goods or services to a Trade Mark or an Application	Tm55	Tm55

 

International Registration of Kenyan Trade Marks

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.