Sep 22, 2022 (Newsletter Issue 13/22)Deadline for Commencement of Recordation of IP Rights ExtendedKenya introduced mandatory intellectual property rights (IPR) registration with the Anti-Counterfeit Authority (ACA) for all imported goods to strengthen the fight against counterfeiting. Not recorded goods in the database will be prevented from being imported into Kenya. Violations can result in fines and even imprisonment.
The deadline for the commencement of recordation was extended for another 6 months until 1 January 2023.
For more information, please click here Source: www.aca.go.ke Jun 25, 2020 (Newsletter Issue 10/20)Expired Marks May be RecoveredOn June 15, 2020, the Registrar of the Kenya Industrial Property Institute (KIPI) published a public notice in a Special Industrial Property Journal notifying the public that the proprietors of the trademarks listed in the issue of the Journal had been duly notified and that they had not applied for renewal of their respective trademarks.
Furthermore, the Registrar informs that, in accordance with the provisions of Rules 67 and 68 of the Trade Mark Rules, trademarks which have been removed from the Trade Mark Register may be restored by the proprietor who files an application for renewal of the trademark against payment of the prescribed renewal fee together with the additionally prescribed restoration fee.
The trademark will then be restored in the Register upon the Registrar being satisfied that it is just to do so and upon imposing such conditions as the Registrar considers appropriate.
For more information, please click hereSource: www.kipi.go.ke Mar 21, 2019 (Newsletter Issue 4/19)
Industrial Property Institute Moved
The Kenyan Industrial Property Institute (KIPI) has moved in December 2018.
The new address is the following:
KIPI Centre
Kabarsiran Avenue
Off Waiyaki Way
Lavington, Nairobi
Source: www.omlaw.co.ke
Jun 28, 2018 (Newsletter Issue 12/18)Important Amendments to IP Law ProposedOn April 10, 2018, the Kenyan authorities published proposed legislation, the Statute Law (Miscellaneous Amendments) Bill, 2018 (the Bill), which provides for amendments to several laws, including the Industrial Property Act 2001 and the Anti-Counterfeiting Act 2008.
The amendments of the Industrial Property Act concern patents, utility models and designs, while the amendments to the Anti-Counterfeit Act 2008 effect trademarks, namely the creation of a dual registration by recordal of the goods.
For further data, please check the information on the Industrial Property Act 2001 and Anti-Counterfeit Act 2008 from Spoor & Fisher.Source: www.spoor.com Jul 12, 2016 (Newsletter Issue 13/16)
Registered Trademarks May Block Company Registrations
The Registrar of Companies in Kenya is now required to consider trademark registrations when assessing company names. The Registrar is required to refuse a company name if the name is ‘offensive’ or ‘undesirable’. A company name will be deemed to be offensive or undesirable if it includes the name of a registered trademark. A written consent from the trademark owner will overcome the problem.
This change of practice is a result of the promulgation of the Companies Act 2015, and the Companies (General) Regulations 2015. There is no provision for the removal of names registered in violation of this requirement. It is also important to note that the situation does not apply in reverse - the Registrar of Trade Marks does not need to consider company names when assessing trade mark applications.
Companies might want to consider filing trade mark applications for their company names. It is, however, worth bearing in mind that a trade mark application does require a genuine intention to use.
Source: Spoor & Fisher, South Africa
Apr 01, 2014 (Newsletter Issue 6/14)Accession to Madrid ProtocolThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to refer to the deposit by the Government of the Republic of Kenya on March 26, 1998, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"). Please see the Madrid (Marks) Notification No. 102, for ease of reference.
In this respect, the Director General of WIPO has the honor to notify that the Republic of Kenya deposited, on March 12, 2014, the following declaration:
- that in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Republic of Kenya, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive an individual fee, instead of a share in the revenue produced by the supplementary and complementary fees.
The said declaration will enter into force on June 12, 2014.
Source: www.wipo.int Oct 25, 2011 (Newsletter Issue 12/11)IP Journal Available Electronically Now The Kenya Industrial Property Institute (KIPI) discontinued the printing of the hard copy of the Industrial Property Journal effective from 30th September 2011. In compliance with the provisions of the Industrial Property Act 2001, an electronic copy of the Industrial Property Journal (the “Journal”) will be availed to members of the public every month, free of charge.
To access the September Journal please click here
Source: Ndikimi & Company Advocates, Kenya Legal basis is the Trade Marks Act Chapter 506 of the Laws of Kenya (“the Act”), as last amended by the Statute Law (Miscellaneous Amendments) Act No. 7 of 2007.
Registration provides protection for the trademark in Kenya only. Trademark protection under the Trade Marks Act is available for registered Trademarks and for well known marks. An unregistered trademark protection is possible only via an action for passing off or the remedies in respect of the same.
Kenya is a member of the Madrid Protocol and the Madrid Agreement.
Though the Trade Marks Act was amended to give effect to the Banjul Protocol on Marks administered by the African Regional Intellectual Property Organization (ARIPO), Kenya is yet to ratify the Protocol to allow the implementation of its provisions.
Nice classification, 11th edition
The following are registrable as trademarks: 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.
The following trademark types are registrable: trademarks, service marks, defensive marks, certification marks and collective marks.
A trademark application is filed at the Kenya Industrial Property Institute (KIPI).
Multiple-class applications are possible.
Foreign applicants do not need a domestic registration.
Foreign applicants need a local agent.
An original (hard copy) power of attorney is necessary. No legalization or notarization is necessary.
The application process includes a formal examination, an examination in respect of inherent registrability and for possible conflicts with prior registered trade marks or pending applications.
If accepted and before registration, the mark is published in the monthly KIPI Industrial Property Journal which is electronically available since September 2011.
National:The opposition period is 60 days from the publication date of the trademark application, which may be extended by up to 90 days.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark protection is valid on its registration with the effective date of the registration being the date of the application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years thereafter.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereA foreign fee (payable in USD) is applied if the person paying the fee or on whose behalf the fee is being paid does not reside in Kenya and does not have a principal place of business in Kenya:
The official fee for the application is USD 200.00 for one class and USD 150.00 for each additional class. The official registration fee is USD 150.00 for each class and USD 100.00 for each additional class. The fee for advertising is USD 60.00 for each class and USD 50.00 for each additional class.
There is also the official fee of USD 50.00 for the filing of the power of attorney, which needs to be first stamped by the Collector of Stamp Duty at a cost of approximately USD 3.00.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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