Apart from offering goods and services, there are many ways your business or company operates. You probably use a unique name, logo and slogan that are associated with your business or company. Regardless of the size of your business or company, it’s important to trademark these words or images to secure rights of using them exclusively and avoid legal battles in the future.
One of the biggest challenges brands face once they have established themselves is other brands stealing their likeness and using it as their own. With a trademark, you may be able to send cease and desist letters to such brands or take them to court to protect your intellectual property.
What is a trademark?
It is a form of intellectual property that consists of recognizable symbols, words or phrases used by a particular business or company and differentiates it from other brands of its kind. It’s also referred to as service marks, when the business or company provides services.
Benefits of registering a trademark
It’s not a must to register for one but it’s good practice. A registered trademark offers an array of benefits including:
- Enables the owner to identify their goods or services
- Prevents the sale of counterfeit products using their marks
- Protects the reputation of the business or company
- Increases the value of your business or company
- Provides exclusive rights over the mark
- Prevents others from registering a similar mark
Characteristics of a trademark
A name, symbol or phrase should meet the qualities of a trademark for the registration to be successful. The qualities include:
- Memorability – it should be easily remembered by the public
- Distinctiveness – it should stand out from competitors.
- Descriptiveness – it should be more detailed making it hard to confuse with other brands
- Durability – it should be able to stand the test of time
- Legality – it shouldn’t contain any unlawful words or symbols or infringe on other brand’s intellectual property rights
Examples of a good trademark
Some of the best trade marks are invented words. Here are some examples of a good trademark:
- Apple
- Red Bull
- Just do it
- Let’s Get Ready to Rumble!
- The North remembers
Registering a trademark in Kenya
Registration in Kenya is governed by the Trademarks Act and the institution charged with doing this is called Kenya Industrial Property Institute. The Act recognizes the rights of both registered and unregistered trademarks.
Unregistered marks can be enforced through passing-off. The owner of the unregistered mark must prove that their trademark has acquired significant reputation through use by the public.
However, it’s best to register a mark as it is evidence that you hold exclusive rights to the name, symbol or slogan. A trademark is valid for 10 years in Kenya. The owner is notified 6 months prior to its expiry. They may choose to renew it or not. If not, they forfeit their rights to use it exclusively.
Requirements for registration
- Proposed mark
- Description of the mark
- Soft and hard copies of the artwork
- Class/category of the mark
- Form TM2 for application to register, Form TM27 to request for a search, Form TM1 for Appointment of Agent and Form TM 10 for Application to renew a mark
- Copy of Certificate of Incorporation or registration for companies and businesses
- Name of the applicant i.e company, business or individual
- Identification card or passport for non-Kenyans of the applicant
- Contact information of the applicant
- Signature of the applicant
Process of registration
Preliminary search
The applicant should conduct a search to determine whether the mark is registrable and doesn’t infringe on other owners’ rights. It’s not mandatory but advisable.
Application
Once the applicant confirms it is available, they can make an application to register it. This is done through Form TM 2 and is accompanied by 7 representations of the mark. For foreigners, application is filed by an agent authorized Form TM 1 or a duly signed and stamped Power of Attorney. The application should be accompanied by Form TM 32 for entry of the address of service in Kenya.
Examination
After the application is received, the process will proceed to the examination step which takes place in 3 stages and takes approximately 5 months to complete.
The first stage is the formation examination. This is to confirm whether the forms are filled correctly, all the documents are filed, and the fees are paid.
The next stage is search. This is to confirm that the mark is registrable and doesn’t infringe on other trademark owners’ rights. If it’s similar to a mark that the applicant holds, an association is requested.
The final stage is substantive examination. This is to examine the distinctiveness of the mark. The applicant is asked to remove non distinctive features from the mark. If the removal results in loss of identity or affects the main features of the mark, an entry of disclaimer is requested for numerals, names of communities, letters, geographical names, names of places, words, figures and general representation of human beings. For marks, emblems, logos, and flags of international organizations aren’t registrable by anyone except the respective organization or authorized personnel.
Once the examination process is complete, KIPI will communicate to the applicant or agent whether it approves or denies the application. If approved, it proceeds to the advertisement process. If denied, the applicant can appeal or abandon the application. It’s worth noting that once a trademark goes through this process, another application cannot be made for the same trademark.
Advertisement and Opposition
The mark is advertised in the KIPI journal, which is published monthly. Anyone with an objection may file a statement of opposition stating their grounds for objection. If opposed, the registration process is stopped until proceedings are concluded. If there’s no objection within 60 days, the trademark will be registered.
Registration
KIPI will issue a Certificate of Registration to the applicant and enter the registration. The date of registration is always duplicated to match the date of application.
The entire process can take up to 10 months to complete. A registered trademark has a registration number which someone can use to verify the status of the mark.