Kenya Set to Earn Millions in Individual Fees from WIPO Madrid System

Kenya Madrid Declaration 2014

Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.

Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.

As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.

In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.

While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.

From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.

The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:

Designation of KENYA (in an international application or subsequent designation)

– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)

Where the mark is a collective or certification mark

– as above

Renewal of an international registration containing a designation of KENYA:

– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)

Where the mark is a collective or certification mark

– as above

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The Madrid Trade Marks Registration System From A Kenyan Perspective

quail-advanced-regular-strength

Editor’s note: For more on the Quail farming craze in Kenya, see here.

As many are aware, the system of international registration of trademarks facilitates the obtaining of protection for marks (trademarks and service marks) and since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. During KIPI‘s two-day Trade Marks Law and Practice Training Course (featured here), Sudi Wandabusi, this blogger’s friend and trademarks examiner at KIPI devised a great practical scenario on the international registration of trademarks.

For purposes of the scenario, a local manufacturer, Isindu Financial Limited is the owner of the trade mark “Quail Advanced Strength” (TM No. 95229) registered at KIPI on 07-07-2013. Isindu now instructs IPKenya to advise on how its trade mark can be protected in the following territories: Zambia, Italy, U.S.A, Japan and Ireland, where its products are already being marketed and sold by authorised distributors.

Why use the Madrid System?

Since Isindu’s trade mark is present in countries outside Africa, the Madrid System is the obvious choice for registration. This system makes it possible for owners to obtain and maintain registration in a number of countries through a simple and cost effective procedure. Therefore Isindu only needs to file one international application, in one language, and pay one fee, in one currency – no translation, currency exchange, legal fee costs.

Is Kenya a member of the Madrid System?

Kenya joined the Madrid Union in 1998. It brought into force both the Agreement and the Protocol on June 26 1998.
The system is administered by the International Bureau of WIPO. There are a total of 92 contracting parties to the Madrid Union. A full list of members can be found here.

Is Isindu eligible to use the system?

Any natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol can use the system.

Therefore Isindu’s entitlement to file the international registration would be that it has a a real and effective industrial or commercial establishment in the territory of the Kenya.

Can Isindu claim priority?

From the scenario above, it is stated that TM No. 95229 was registered at KIPI on 07-07-2013. An applicant can claim priority
when filing within six months of the date of an earlier filing.
Therefore, Isindu is still within time as at the date of this blogpost and can claim priority.

How much does it cost?

The international registration fees payable to the International Bureau are available online here. This page also has a ‘fee calculator’ which is very helpful in establishing exactly how much is to be paid. The standard fee is CHF 903 for coloured marks and CHF 653 for black and white with a complementary fee of CHF 100. In addition, there is a handling fee of KES 1000 or USD 13 payable to KIPI.

How do the applicants or agents interact with the Bureau?

Several online services have been introduced by the International Bureau. They enable faster, easier communication between the applicant/agent and the bureau, namely:

1) Madrid Goods & Services Manager is a nifty tool that assists TM applicants/agents in compiling their lists of goods and services to file national and international applications. It is available in several languages and helps avoid irregularities in filing. The tool is indispensable as it enables one see which terms are acceptable by International Bureau and different designated contracting parties

2) Madrid Real–time Status (MRS) is a stand-alone tool that provides the status in real time of trademark documents being processed by WIPO. It enables applicant/agent to see what’s happening to their request at any point in time.

3) Madrid Electronic Alert (MEA) is a free ‘watch service’ that informs anyone interested in monitoring registration status of international marks. It is a subscription-based daily e-mail alert system that alerts when changes are recorded in the International TM register.

4) Madrid Portfolio Manager (MPM) is a web service that allows holder of international registrations and there reps access their international trademark portfolios. It comes in handy when submitting new requests for recordal in WIPO international TM Registry.

Comments:

This blogger notes that despite the fact that Kenya is signatory to the Madrid Union, other neighbouring countries within the East African Community (EAC) are not members, with the exception of Rwanda. Within the African continent, less that 11 countries are members of the Madrid system. It has been argued that the reason for the low number of signatories is that the Madrid system is not attractive to African states. It is indeed noteworthy that the larger economies in Africa are not members of Madrid, including South Africa, Egypt and Nigeria. The strongest resistance has come from trade mark practitioners who have lobbied against this system arguing that they stand to lose revenue (agent fees) under the Madrid system.

In contrast, the national trade marks office, KIPI, would prefer the Madrid System as it provides an extra source of revenue. The 35% revenue sharing provision under Madrid almost guarantees the member states an extra added income of CHF 10, 000 and this sum could be higher depending on the designation. KIPI receives an average of CHF 300,000 annually through the Madrid System, whereas a country such as Botswana receives an average of CHF 500,000 annually.

For information on the Madrid System, check out the WIPO website here and WIPO also has a database of all trade marks registered under the Madrid System available here.

 

 

Software Patents, Business Method Patents: State of Play in Kenya

“anything under the sun that is made by man [is patentable]”
– US Supreme Court in the case of Diamond v. Chakrabarty 447 US 303 (1980)

“From where does a man derive his right to possess something, and to refuse the whole world his right of ownership? This right originates from only one factor; the fact that man is nobody’s property. He owns himself and cannot be someone else’s possession. If, therefore, man possesses himself, it is clear that his wealth, his intellect, and his ability cannot be someone else’s property. So, whenever he uses his intellect, his health and his ability to make anything, that thing becomes his property”
– Mwalimu Julius Nyerere, “Freedom and Unity/Uhuru na Umoja” (1966) (cited at #CIPITConf by @IPKenya)

“Anything that won’t sell, I don’t want to invent. Its sale is proof of utility, and utility is success.” – Thomas A. Edison. (cited at #CIPITConf by @HKMLegal)

“When we work, natural law says we have the right to own our work. To let others steal this is to destroy the basis of civilization, to cast us into slavery. If I cut a tree and make a table, it is mine. If I write a story, it is mine. If I invent a new compression algorithm, it is mine. When someone takes my ideas, it is theft, and a just society must punish theft, or it falls apart. Software patents are thus a natural and necessary protection for original ideas.”
– Peter Hintjens. (cited at #CIPITConf by S. Kiptinness)

During CIPIT’s 2-day conference (#CIPITConf) on the patentability of software in Kenya, none of the speakers appeared to advocate for an outright position for or against software patents. Instead, all the presenters at #CIPITConf did their best to elaborate on the pros and cons of patents generally and software patents in particular.

With regards to the patentability of ICT inventions, the patent experts at #CIPITConf from the World Intellectual Property Organization (WIPO) and the Kenya Industrial Property Institute (KIPI) both seem to agree that one is most likely to be granted a patent for a hardware controlled by software and least likely to be granted a patent for a software embodied on a machine readable medium or through a network.

Therefore the decision Kenya needs to make is where to draw a line between unpatentable computer programs and patentable inventions that embody, apply or use the unpatentable computer program. In this regard it was noted by participants at #CIPITConf that there’s a lack of administrative and judicial interpretations on the exclusions from patentable subject matter provided for under section 21 of the Kenya Industrial Property Act. Thus, Kenya needs to develop it’s own clear tests for distinguishing non-patentable software and patentable software-implemented inventions. These tests will only develop from a large and consistent volume of software patent applications being filed at KIPI coupled with fervent litigiousness on the part of unsuccessful software patent applicants.

Read the rest of this article over at the CIPIT blog here.

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:

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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:

4 kosgei kipi 2010

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

quail-advanced-regular-strength

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.

Summary of the Industrial Property Act 2001

The main object of this Act is to provide for the promotion of inventive and innovative activities, to facilitate the acquisition of technology through the grant and regulation of patents, utility models, technovations and industrial designs. Section 3 of the Act establishes the Kenya Industrial Property Institute (KIPI).

KIPI is the main implementation and administration agency for industrial property in Kenya. It liaises with other national, regional and transnational intellectual property offices, patent offices and international organizations that are involved in industrial property protection. KIPI’s mandate includes: considering applications for and granting industrial property rights; screening technology transfer agreements and licences; providing to the public industrial property information for technological and economic development; and promoting inventiveness and innovativeness in Kenya.

The Act also establishes the Industrial Property Tribunal to deal with cases of infringement. Section 109 of the Act also criminalises infringement on others patents, registered utility models or industrial designs.

The application forms for patent, industrial design and utility model are available here.
The current fees payable to KIPI for patent, industrial design and utility model applications are available here.

 

Patents and Utility Models under the Industrial Property Act

hippo water roller afrigarnics limited isaiah esipisu

A patent is a legal document granted by a State that secures to the holder, for a limited period, the right to exclude others from making, using, selling, offering for sale, and importing the patented subject matter. Any new and useful process, product, composition of matter, or any improvement thereof, may be patented, if such invention meets these three requirements: (1) Novelty; (2) Inventive step i.e must not be obvious to a person of ordinary skills in that field of art, and (3) Industrial applicability.

The following are not patentable:

  • Discoveries or findings that are products or processes of nature, where mankind has not participated in their creations
  • Scientific theories and mathematical methods
  • Schemes, rules or methods of doing businesses or playing games or purely performing mental acts.
  • Methods of treatments of both human and animals by surgery or therapy as well as diagnostic methods practice thereto, except products for use thereof.
  • Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation

 

The steps to be followed for grant of a patent in Kenya are as follows:

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NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.

Industrial Designs under the Industrial Property Act

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An industrial design refers to the ornamental or aesthetic features of a product.  In other words, it refers only to the appearance of a product and NOT the technical or functional aspects.

Any products of industry can be protected as an industrial design including: fashions, handicrafts, technical and medical instruments, watches, jewellery, household products, toys, furniture, electrical appliances, cars; architectural structures; textile designs; sports equipment; packaging; containers and “get–up” of products

The requirements for industrial design protection are: (1) Novelty;  (2) Originality i.e. independently created; and (3) Design must have “individual character” – when overall impression is evaluated against others.

The registration process for an industrial design in Kenya is as follows:

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NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.