What is a trademark?
Under Kenyan law, a trade mark is a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person. Upon registration, a trademark is valid for ten years.

Purpose of Trade Marks

Marks distinguish products by announcing characteristics which are not obvious.

They protect the goodwill and reputation of the respective business entities.

They protect consumers against confusion and help them identify products.

General Law applicable

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.

Regulatory Authority
The Government Agency responsible for trademarks in Kenya is the Kenya Intellectual Property Institute located at South C in Nairobi.

Requirements and Procedure governing the Application for registration of a Trade mark in Kenya

The applicant needs to complete a Form TM1 which appoints us as his Trademark agents ( provide a link to download the TM1)

The applicant shall provide twelve prints of device marks.

The agent searches the availability of the mark

The agent fills a Form TM2 application for the mark

KIPI issue an approval or disapproval

If mark approved the agent pays advertisement fees and the mark is published in the KIPI journal for 60 days

If there is no opposition to the application for the mark within the 60 days then a certificate of registration is issued to the applicant as the registered proprietor of the mark.

Classification

A single application may cover more than one class. Classes are in terms of goods and services as recognized by the Kenya Industrial property Institute. There are 42 recognised classes in Kenya.

Opposition

Opposition may be lodged within sixty days following the date of advertisement of the trade mark application.

Extension of the opposition period is possible at the discretion of the Registrar for a maximum of 90 days.

Use

Registration may be cancelled if the trade mark was registered without any bona fide intention, to use the trade mark and there has, in fact, been no bona fide use of the trade mark up to a date one month before the date of the application for cancellation.

Registration may also be cancelled if there has been no bona fide use of the trade mark for a continuous period of five years and one month up to date of application for cancellation.

Permitted use by a third party cannot be relied on by the proprietor unless the user is record as a licensee.

Duration and Renewal

A trade mark registration is effective for an initial period of ten years and, thereafter, renewal for further periods of ten years.

Licensing/registered users

Licensing is recognized and license agreements must be duly registered in Kenya at KIPI. The license agreement must provide for quality control by the licensor.

Infringement is the use of a registered trademark without the license of the registered proprietor.

Assignments

Assignments are possible and may be made with or without the goodwill of the business.

Requirements for assignment:

(a) Deed of assignment;
(b) Power of attorney from the assignee.

PATENTS

General Information

Patent protection is obtainable via a national filing at Kenya Intellectual property Institute

Kenya is a member of the International Convention, PCT, and WTO and of ARIPO.

Government agency in charge of Patents is the Kenya Intellectual property Institute.

A majority of the clients of the Trademarks Department in this area are local and international pharmaceutical companies.

Patent Law In Kenya

Applicable statute law regulating patents in Kenya is Industrial property Act No 3 of 2001

Patentable Subject Matter

An invention is patentable if it is new, involves an inventive step, is industrially applicable or new use. The following 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 method excluding products, for use in any such methods;

Presentation of information;

Public health related methods of use or uses of any molecule or other substance whatsoever used for the prevention or treatment of any disease that the Health Minister may designate (health hazard or as a life-threatening disease;

Plant varieties, but not parts thereof or products of biotechnological processes; and

Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation.

Examination

An application is initially subjected to formal Examination. Thereafter the Managing Director of KIPI may call for a request for substantive examination to be filed.

Duration / Maintenance

A patent expires at the end of twenty years from the filing date subject to payment of annual maintenance fees as from the day before the first anniversary of the filing date. A grace period of six months is available

Working

At any time after four years from filing or three years from grant, whichever period last expires 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. .

Licences and Assignments

Licences and Assignments of Patents must be registered.

Grant of patent
Where 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.

Who may be granted a patent?
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; 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.
Compulsorily acquisition by the Kenya Government:

Compulsory acquisition may be exercised:

Where the patentee has refused to work the patent, or

Where 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.

Who may sue?
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.