Kenya - Accession to Madrid Arrangements now Effective
Kenya acceded to the Madrid Agreement Concerning International Registration of Marks, and the Protocol relating to that Agreement, with effect from 26th June 1998. At that time, the national law of Kenya relating to trade marks was contained in the Trade Marks Act (Chapter 506) as amended to 1994 and the Rules, subsidiary to that Act, as amended to 1995. Neither of these measures contained any reference to the Madrid arrangements. Kenya´s legal system, in common with many Commonwealth countries, observes the common-law principle, whereby an international agreement only becomes part of domestic law when enacted into the national law by the national legislature. As there had been no such enactment by the date of accession, there were no effective provisions under Kenyan Law for Madrid trade mark registrations, designating Kenya and notified by WIPO to the Kenya Registrar of Trade Marks ("Madrid/Kenya Marks"), to be recorded or processed by her. Further, there was no effective machinery under which the owner of a Madrid/Kenya Mark could restrain the registration or use of a similar mark by another party. Clients were accordingly advised that in practical terms, Madrid registrations were of no practical value in Kenya for the time being and effective protection was only available by means of a national registration.
On 23rd August, 2002, the first move was made towards recognition of Madrid/Kenya Marks, with the bringing into force of the Trade Marks (Amendment Act), 2002. No substantive provisions were, however, contained in that Act. It imported into the principal Act, references to the Madrid Convention, the Madrid Protocol and the International Bureau of the World Intellectual Property Organisation; and it defined as an "International Trade Mark", a trade mark which is entitled to be protected in Kenya under those arrangements.
Apart from those preliminary provisions, no clauses of the 2002 Act provided for recognition, processing or enforcement. That Act simply stated that the Minister responsible had the power, in Rules, to make appropriate provisions to give effect to the Madrid Agreement and the Madrid Protocol.
Now, the Trade Marks (International Registration) Rules, 2003, have come into effect on 22nd August, 2003. They contain substantive provisions for Madrid/Kenya Marks, the principal features being summarised as follows:
On receipt from the International Bureau, of notification of a Madrid/Kenya Mark, the Registrar is required to examine it and either notify the International Bureau that protection cannot be granted (if there are grounds for so doing); or advertise the application similarly to a national trade mark application.
Advertised Madrid/Kenya Marks may be opposed by any person and the procedure is the same as that for opposition of national applications. Under the Trade Marks (Amendment) Rules, published simultaneously, the availability of extensions of time in opposition proceedings has been drastically reduced. If the Registrar refuses protection as a result of the opposition, this is to be notified to the International Bureau.
The grounds of refusal, whether on examination by the Regisrar or upon opposition, are to be in accordance with the applicable (Madrid) Treaty.
Protection may be refused with respect to all, or only some of the goods or services for which protection is sought.
The Registrar is to maintain a Supplementary Register (International) for recording Madrid/Kenya Marks and any person may request the Registrar to cause a search to be made in the Supplementary Register and provide extracts or copies. It appears that personal searches in the Supplementary Register, unlike the main register, may not be available.
Madrid/Kenya Mark may be taken off the Supplementary Register on the grounds of non-use, expunged or varied on the same grounds as apply to national trade mark registrations.
A Madrid/Kenya Mark may be transformed into a Kenyan registration if the underlying international registration is cancelled at the request of the office where the basic registration was made.
As to Madrid/Kenya Marks, notified to the Kenya Regisrar before the 22nd August, 2003, the Rules state first, that where the period of notice under the applicable (Madrid) Treaty has expired, these "pending applications" are to be entered automatically into the Supplementary Register without examination or advertisement for opposition. Secondly, where the applicable period has not expired the Registrar must examine them. Persons having an objection to any registration, so taken automatically into the Supplementary Register may apply for its cancellation.
Madrid/Kenya Marks, duly registered as above, shall have the same effect and enjoy the same protection as national trade mark registrations in Part "A" of the register.
Due provision is made for proprietors of Kenyan national trade mark registrations, if qualified, to apply for international registrations based thereon.
The Kenyan authorities are to be congratulated on making these effective provisions for recognition, processing and enforcement of Madrid/Kenya Marks. It should be remembered that no such arrangements have yet been made in the following African countries, which have purportedly joined the Madrid arrangements from the dates stated:- Lesotho (1999); Sierra Leone (1997); Sudan (1984); Swaziland (1998); and Zambia (2001). International registrations remain ineffective in those territories and the only effective trade mark protection is by means of national registrations.
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