Trade Mark vs Company Name Registration: Innscor Int. Battles Rwandan Companies, Pizza Inn Ltd and Chicken Inn Ltd

innscor-international-rwanda-trademark-pizza-inn-chicken-limited-image-by-nlipw

In a recent media report here, the Commercial Court of Nyarugenge in Rwanda has ruled that it will not proceed with a case filed by Innscor International accusing two local companies Chicken Inn Limited and Pizza Inn Limited of trademark infringement in Rwanda. The basis of this ruling was reportedly that Innscor had not demonstrated to the court that it had “legal status according to the law governing registered entities in Rwanda”. Technicalities aside, it is clear that once Innscor produces its certificate of incorporation in court, this case would proceed to consider the merits of Innscor’s claim (as illustrated by the picture above), namely that registration of a name as a company name by entity A should not trump any rights in such a name acquired previously by entity B through trade mark law.

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OAPI Suspends Agents: IP Community Across Africa is Watching

OAPI NEW LOGO ORGANISATION AFRICAINE DE LA PROPRIETE INTELLECTUELLE

Last year, Organisation Africaine de la Propriété Intellectuelle (OAPI) published a notice on its website stating that a group of unnamed persons calling themselves “Collectif des Conseils en propriété industrielle” were leading a public campaign opposing OAPI’s accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Recently, OAPI published two notices here and here informing the public that two OAPI Agents, Christian Djomga and Judith Fezeu Tchimmoe along with all other representatives from their firm, Cabinet Isis, have been provisionally suspended. In addition to several alleged violations of OAPI rules, OAPI claims that Djomga and Fezeu are involved in the Collectif’s campaign against OAPI joining Madrid.

Intellectual property (IP) observers will be keenly following this on-going matter between OAPI and the Collectif with at least three main questions in mind. Firstly, how will OAPI member states react to the Collectif’s campaign? Secondly, what will be the fate of the agents implicated in the Collectif and it’s campaign? Thirdly, how will the outcome from this saga between the Collectif and OAPI affect relations between agents and IP offices in other African countries?

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Recap of 6th Global Entrepreneurship Summit 2015 #GESKenya2015

6th Annual Global Entrepreneurship Summit (GES) Nairobi Kenya 2015 July Victor Nzomo Delegate

In a previous post here, this blogger announced that among the topics to be discussed at the 6th Global Entrepreneurship Summit (GES) was the protection of intellectual capital with a sharp focus on intellectual property (IP). In addition to the IP Workshop on the first day, there was a Creative Economy Workshop on the second day. According to this workshop’s introduction, the creative industries (arts, entertainment, fashion) are attractive to many young people but few understand the business behind these industries and how to tap the creative economy to give them returns. On the workshop’s panel was a group of successful creatives who are turning the creative arts into sources of revenue, jobs and wealth creation.

In addition to the above, this blogpost will profile some of the top products and services pitched during the Global Innovation through Science and Technology (GIST) Tech-I Competition at GES which recorded over 790 applications from 74 countries in the sectors of agriculture, energy, healthcare, and information communication technology.

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ARIPO Roving Seminars 2015: Copyright and Industrial Property Rights in Kenya

ARIPO Roving Seminar 2015 Kenya Director-General Fernando Dos Santos ARIPO Chief Examiner Emmanuel Sackey KECOBO Director Marisella Ouma Victor Nzomo IP Kenya

As earlier advertised here, African Regional Intellectual Property Organization (ARIPO) successfully executed its on-going series of Region-wide “Roving Seminars” in Kenya with the first two days (Monday 16th and Tuesday 17th of March 2015) being devoted to copyright matters under the theme: “Copyright in the Digital Environment” and last two days (Thursday 19th and Friday 20th of March 2015) being devoted to industrial property matters under the theme: “Protection and Promotion of Patents, Trade Marks, Industrial Designs and Geographical Indications”.

In his opening remarks, ARIPO Director General Mr. Fernando Dos Santos brought to our attention the important role Kenya has played as a pioneer ARIPO member state. For those who may not know, when ARIPO was established, its first headquarters were hosted at the Attorney General’s Chambers (Sheria House) in Nairobi before later relocating to its present headquarters in Harare, Zimbabwe. Therefore the DG described coming to Kenya and visiting Sheria House as “coming home” since this was his first visit to Kenya since taking office as Director General in 2013.

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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:

1 kosgei kipi 2010

2 kosgei kipi 2010

3 kosgei kipi 2010

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.