Trademark registration in Kenya

Trademark registration is an essential step for businesses seeking to protect their brand identity in Kenya. Located in East Africa, Kenya is an important gateway to the region with more than 400 million people. The Port of Mombasa is East Africa’s largest seaport, serving as a shipping hub for the region. Kenya has a diversified economy with many sectors contributing to GDP, including agriculture, tourism, services, manufacturing, and information technology. Kenya possesses many majestic and diverse natural landscapes, along with rich cultural heritages, attracting international tourists, Kenya’s tourism industry is developing strongly, contributing a significant part to the country’s GDP. Kenya has great potential for renewable energy, especially solar and wind power. The Kenyan government always has policies to create a favorable investment environment for domestic and foreign investors such as tax incentives and support policies for businesses. Kenya is investing in the development of connectivity infrastructure, including roads, railways, ports and airports. The improved infrastructure will boost trade and attract investment. Therefore, more and more businesses are expanding their business scope here. To be able to distinguish their trademark from other competitors, enterprises need to pay attention to the trademark registration procedure. Viet An Law Firm would like to guide customers preliminarily through the procedure for trademark registration in Kenya through the article below.

Legal basis

• Commercial Law (Chapter 506, amended by the old law in July 2007)

Definition of “trademark” in Kenya

Method 1: A trademark is a mark that distinguishes the goods and services of an industrial or commercial enterprise, or a class of such enterprises. This sign can consist of one or more words, letters, numbers, drawings or images, monograms, signatures, colors or combinations of colors, etc. Signs may also include a combination of any of the factors outlined above.

Option 2 (based on the Commercial Law, Chapter 506, Article 2):

A trademark can be a word, symbol, design, or combination of these elements, used to distinguish an individual’s or organization’s goods or services from competitors in the market. Commercial Law (Chapter 506) Article 2 defines a “sign” as a form, slogan, device, trademark, title, label, ticket, name, signature, word, letter or number, or any combination thereof, whether expressed in two-dimensional or three-dimensional form.

Why is a trademark required?

Trademark registration brings many benefits to businesses:

• Direct Proof of Exclusive Ownership in Kenya: A trademark registration is proof of a business’s exclusive ownership of the trademark in Kenya. This helps prevent potential infringers from taking advantage of the brand reputation of the business.
• Easy protection of rights: When someone challenges the trademark rights of a business, registration will make it easier for the business to protect its rights. In the event of a dispute, the burden will be placed on the challenger, who must prove his rights to the trademark.
• Avoid infringing on the rights of others: The registration process with a thorough examination of duplicate trademarks helps ensure the business has a unique trademark, unlike any other party’s trademark. This helps businesses avoid infringing on the intellectual property rights of others.
• Although registration is not required: Using a trademark for a certain period of time can establish ownership of a business through customary law – trademark registration is strongly encouraged. Registration is direct proof of ownership and makes it easier for a business to protect its rights in case someone challenges it. In a dispute, the burden will be placed on the challenger to the registered trademark to prove ownership.
• Prevent legal disputes: Using an unregistered trademark can lead to costly and lengthy legal disputes over who has the right to use it.
• Valuable assets for businesses: Registered trademarks are also a valuable asset for business expansion, especially through franchising

Types of trademarks that can be registered in Kenya

• Common trademarks
• Certification marks
• Trademark guarantee (if an application for registration of a secured mark is filed, it should be accompanied by a statement of the case and a statutory statement as provided for in paragraph 36(1))
• Collective trademark (if applying for registration of a collective mark, it should be accompanied by a copy of the rules governing the use of the mark)

Trademark dossier in Kenya

Trademark registration in Kenya provides legal protection for the applicant’s trademark and prevents others from using it. Below is a list of documents the applicant needs for the application:

Application Form: The applicant downloads the official application form from the Kenya Intellectual Property Institute (KIPI) (https://www.kipi.go.ke/) website and fills in the required information.

Trademark sample: Sample of the applicant’s trademark. This can be a logo, letter symbol, design, or combination that the applicant wants to register. The format may vary depending on KIPI requirements (e.g. digital file, specific size).

Applicant Information:

• Individual: Full name, address and nationality.
• Company: Company name, business registration number, and head office address.

Classification of goods and/or services: Applicant Identification of specific classes of goods or services to which the applicant’s trademark applies according to the International Classification of Goods and Services (Nice Classification). The applicant can find a classification list on the website of KIPI or the World Intellectual Property Organization (WIPO) (https://www.wipo.int/classifications/nice/en/).

Power of attorney (if applicable): If an attorney or representative is filing on behalf of the applicant, the applicant should obtain a signed power of attorney authorizing them to act on behalf of the petitioner.

Payment of fees: Proof of payment of trademark registration fees. Applicants can find the current fee table on KIPI’s website.

Trademark registration fees in Kenya

The exact trademark registration fee in Kenya depends on a number of factors, but here is a breakdown for the applicant’s reference:

Official fee:

• Application fee: This fee is paid when the applicant submits an application. The current cost is about 4,000 KES (Kenyan Shilling).
• Publication fee: This fee is paid 18 months after the date of application and is approximately KES 3,000.
• Application fee: Once the applicant’s trademark is accepted, the applicant needs to pay a registration fee of approximately KES 4,000.

Additional cost:

• Trademark Search: The applicant should perform a search prior to filing the application to ensure the desired applicant’s trademark has not been registered. This search can be done through KIPI or a private company and the cost will vary depending on the service provider.
• Professional fees: Consultation with someone experienced in Kenyan trademark registration can be helpful to ensure the applicant’s application meets legal requirements. This may also incur additional costs.

How to file a trademark application in Kenya

To file for trademark protection in Kenya, you can apply using the following filing methods:

• Direct submission: You can go directly to the Kenya Intellectual Property Institute (KIPI) at KIPI Centre 17 Kabarsiran Avenue, Off Waiyaki Way, Lavington Nairobi to submit your application and related documents.
• By Post: You can send your application form and all required documents via postal service or courier service to the address of the Kenya Intellectual Property Institute (KIPI) at KIPI Centre 17 Kabarsiran Avenue, Off Waiyaki Way, Lavington Nairobi.

Trademark registration in Kenya through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Kenya acceded to the Madrid Agreement on 26 June 1998.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Kenya accessed the Madrid Protocol on 26 June 1998.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with Kenyan designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Kenya of Viet An Law Firm

• Carry out the search and notify customers in writing the results of trademark search in Kenya;
• Draft the dossier and file directly on behalf of the trademark owner and monitor the status of the trademark application filing in Kenya;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Kenya;
• Assist in monitoring, representing the resolution of objections and feedback with intellectual property representatives carrying out procedures in Kenya.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to apply for trademark registration in Kenya, please contact Viet An Law Firm for the most effective support.