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Q. What is a trademark?
A. Under the Kenyan law, a trademark includes any word, name, symbol,
device, or any combination, used or intended to be used in commerce,
to identify and distinguish the goods of one manufacturer or seller from
goods manufactured or sold by others. Upon registration, a trademark
is valid for ten years.
Q. What is the purpose of a trademark?
A. Trademarks distinguish products by describing characteristics which
are not obvious. They protect the goodwill and reputation of the
respective business entities. They also prevent confusion, helping
consumers identify the trademarked products or services.
Q. What is the applicable general law for trademarks?
A. The law that regulates trademarks in Kenya is the Trade Marks Act
(Act no. 4 of 2002) which came into force on 23 August 2002 and the
Rules thereto.
Q. Who is the regulatory authority?
A. The government agency responsible for trademarks in Kenya is the
Kenya Intellectual Property Institute located at South C, Nairobi.
Q. What are the application requirements and procedures for
the registration of a trademark in Kenya?
A. As an applicant, you'll start by filling out the TM1 form, which
appoints us as your trademark agents. You'll have to provide us with
twelve prints of the device marks. Then we'll conduct a search for the
availability of the mark. If the mark is available we will fill out the TM2
application form for the mark, which will have to be approved by KIPI.
Once the mark is approved, we will pay advertisement fees and publish
it in the KIPI journal for 60 days. If there is no opposition to the mark
within 60 days, a certificate of registration is issued to the applicant,
making him the official registered proprietor of the mark.
Q. What is Classification?
A. A single application may cover more than one class. Classes are the
Kenyan categories for goods and services as recognized by KIPI -
Kenya Industrial Property Institute. There are 42 recognised classes
in Kenya.
Q. What is an opposition to the application?
A. An opposition to the trademark application may be lodged within
sixty days from the day the advertisement of the trademark application
has been published. The extension of the opposition period is possible
at the discretion of the Registrar for a maximum of 90 days.
Q. Can the registration be cancelled?
A. The registration may be cancelled if the trademark was registered
without any bona fide intention to use the trademark, or that it has
been no bona fide use of the trademark up to one month before the
date of the application has been set for cancellation. The registration
may also be cancelled if there has been no bona fide use of the
trademark for a continuous period of five years and one month until
the date of application for cancellation. Permitted use by a third party
cannot be accepted by the proprietor unless the user has been
recorded as a licensee.
Q. How long lasts the registration?
A. A trademark registration is effective for an initial period of ten years.
Renewal of registrations are also valid for ten years.
Q. Who are the licensed/registered users?
A. In Kenya licensing is recognized and license agreements must be
duly registered at KIPI. The license agreement must be provided for
quality control by the licensor. Infringement is the use of a registered
trademark without the license of the registered proprietor.
Q. Are assignments allowed?
A. Assignments are permitted ands can be made with or without the
goodwill of the business. The requirements for assignment are (a)
Deed of assignment; (b) Power of attorney from the assignee.
Q. How can I protect a petent in Kenya?
A. Patent protection is obtainable via a national filing at Kenya
Intellectual Property Institute. Kenya is a member of the International
Convention, PCT, WTO and ARIPO. The governmental agency in charge
with Patents in Kenya is KIPI - Kenya Intellectual Property Institute.
Today most clients of the Trademarks Department are local and
international pharmaceutical companies.
Q. What is the patent law in Kenya?
A. The applicable statute law that regulates patents in Kenya is the
Industrial property Act No 3 of 2001.
Q. Is everything Patentable?
A. An invention is patentable if it is new, involves an inventive step, is
industrially applicable or it provides a new use. Not every idea is
patentable. For example, the following subjects are not patentable:
discoveries, scientific theories and mathematical methods; schemes,
rules or methods for doing business, performing mental acts or playing
games and computer programs; methods for treatment of the human
or animal body by surgery or therapy; diagnostic methods excluding
products, for use in any such methods.
Q. What is the process of a patent application?
Any patent application is subject to a formal examination. After the
examination the Managing Director of KIPI may request for additional
information. A patent expires 20 years after it has been applied and it
subject to annual maintenance fees, after a grace period of six
months. At any time after four years since it has been filed or three
years from grant, any person may apply to the tribunal for a licence to
exploit the patented invention, on the grounds that a market for the
patented invention is not being supplied on reasonable terms in Kenya.
Q. Should Licences and Assignments be registered?
A. Yes, licences and assignments of patents must be registered. When
a patent is granted, notification of the grant is sent to the patentee.
The patentee is later issued with a patent certificate and that patent
is later registered in the register of patent under section 46.
Q. Who may be granted a patent?
A. A patent may be obtained or owned by a natural or juridical legal/
artificial person. Natural persons may be individuals or groups. Artificial
persons may be corporations or companies such as Pfizer, or research
organizations and universities such as Harvard. Under section 17 of
the Science and Technology Act, Cap 250, inventions made by
scientists in research institutions established under the Act e.g. KEMRl
are patented in favour of the Research Institute and not the individual
inventor. But the inventor must be named as per section 33, IPA.
Governments and other organizations may also hold a patent by
commissioning the research, through assignment and by compulsorily
acquiring patents.
Q. What is the compulsorily acquisition by the Kenyan Government?
A. Compulsory acquisition may be exercised when the patentee has
refused to work the patent, or when the patentee has refused to
license other persons to work the patent on equitable terms. The
owner of the patent must be promptly and adequately compensated.
Q. Who may sue in a patent case?
A. A case may be brought by the patentee or his/her personal
representative in the case of a deceased patentee or the executor of
the deceased's estate will. The assignee becomes a beneficial owner
while the patentee remains the legal owner. Hence ordinarily an
assignee can only bring a suit if the patentee is joined as a party.
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