Kenya - Summary of Trade Mark Law Amendments 2002 - 2003
The Trade Marks Law of Kenya has been closely based on that of the United Kingdom pre-1994 including provisions for service marks. The Trade Marks (Amendment) Act, 2002, made significant amendments with effect from 23rd August, 2002, but many details were left to be provided for by subsidiary legislation. Those supplementary provisions were contained in the Trade Marks (Amendment) Rules 2003, with effect from 22nd August, 2003. Nevertheless, a number of aspects needed clarification. Following much correspondence and a visit by our consultant and former partner to the Kenya Intellectual Property Institute (KIPI), the main points of the new legislation can be summarised as follows:
Definition of a Trade Mark
Although an object of the amendments is to make the law TRIPS compliant, the definition of a trade mark has not been widened at this stage. It retains the former, complex UK definition and we shall be glad to discuss it on request.
Paris Convention priority was already recognised. Provisions are now made for recognition and processing of international registrations under the Madrid Convention and the Madrid Protocol, which Kenya joined in 1998. These details are discussed elsewhere. Provision is also made for ARIPO Trade Marks under the Banjul Protocol, if and when Kenya opts to join that system. It has not yet done so.
Well Known Marks
If a mark is well known in Kenya as being the mark of a person who is a national of a Paris Convention country, or who is domiciled in, or has a real and effective industrial or commercial establishment in a Convention country, whether or not that person carries on business or has any goodwill in Kenya, the owner can restrain by injunction the use in Kenya of the identical or a similar mark in relation to identical or similar goods or services. Such a well known mark will also be a bar to the registration of a confusingly similar trade mark in Kenya. These provisions may not be used to restrain continued use of a mark if the use commenced before 23rd August 2002. Five years’ acquiescence can also deprive the owner of the well known mark of his remedies.
Collective Trade Marks - Geographical Indications - Other "Special" Trade Marks
In addition to the provisions already made for Certification Trade Marks, a mark capable of distinguishing the goods or services of persons being members of an association may now be registered as a Collective Trade Mark. An application for registration of a Collective Trade Mark is to be accompanied by a copy of the Rules governing the use of the mark. Geographical names or other indications of geographical origin may be registered as Collective Marks. The amendments leave in place the other existing, special types of mark, namely:- · Series of marks - Where an applicant has two or more marks for the same goods or services, which resemble each other in their material particulars but which differ in certain details, they may be registered as a series in one registration. · Defensive trade marks - The owner of an invented, word trade mark, which has become particularly well known for goods/services for which it is registered and is used, may register that mark for other goods/services, for which he does not use or intend to use it.
Classification of Goods / Services
In place of the previous detailed, national schedule of classes, which corresponded to the 6th Edition of the Nice classification, the Act now provides for goods and services to be classified in accordance with the Nice Agreement as revised and amended from time to time. Currently, therefore, the 8th Edition is applicable.
It has been confirmed that since 22nd August, 2003, it has become a multi-class system in which an application for registration of the same mark, in more than one class of goods and/or services, is treated as a single application developing into a single registration. The Rules are to be further amended by deleting or amending one of the pre-2003 Rules, which appears still to require separate applications for different classes.
Addition of Goods / Services to Registrations
Applications can be made to add goods or services to those in respect of which a subsisting trade mark is registered, including goods or services in additional classes. Such applications shall be advertised and may be opposed in the same way as a new trade mark application.
Classification of Figurative Elements of Marks - Three-Dimensional Marks - Colour Claims
The amended Act states that any figurative elements of a mark shall be classified in accordance with the Vienna system. The Rules and new application form do not cater for this to be done by the applicant. It is understood that figurative classification will be undertaken, in due course, by the Registrar.
The amended Rules provide for registration of three-dimensional trade marks, and for claiming colour.
Terms of Registration and Renewal
The duration of first registration of a trade mark is increased from 7 years to 10.Renewal terms are reduced from 14 years to 10.
A transitional proviso states: "ll the trade marks that were registered or the registration of which was renewed before [23rd August 2002 - Effective date of amending Act] shall remain in force until the expiry of the period of registration or renewal and thereafter [the new terms] shall apply."
There has been debate amongst the Registrar, his advisers and the practitioners, about the terms which should apply to:
- Registrations, which were applied for before the above amendment date and whose certificates of registration were not issued until after that date;
- Registered trade marks, whose renewals fell due before the amendment date but whose renewal certificates were issued after that date.
It has been agreed that there is uncertainty about this issue and that it should be resolved by a short, amending Act, which could pass quickly through Parliament. We hope and trust the effect of the amendment will be that:
- The initial term of a trade mark registration will depend on the effective date of that registration (being the date of filing the application);
- The term of a renewal will depend on the date upon which the renewal fell due.
However, this has still to be confirmed and we will advise further as soon as possible.
Meanwhile, large numbers of certificates of registration and renewal have been issued, whose terms are currently doubtful. These are being retained, pending a final decision as above.
Advertisement of Applications
The Registrar was obliged to publish trade mark applications etc. in the Kenya Official Gazette. Publication may now, at the Registrar’s option, be in the Gazette or in the separate Kenya Industrial Property Journal which was recently introduced. The Journal is now being issued monthly and contains considerable numbers of trade mark applications. This means that the backlog of unpublished applications, which had become huge due to inter-departmental difficulties, is being reduced.
Associated Trade Marks
The Act used to provide for certain registrations, covering the same mark or similar marks for similar goods or services, to be associated with each other. Associated marks could only be assigned together, not separately. This provision has been repealed and existing associations between current trade mark registrations have been abolished.
Licensees / Registered Users
The expression "registered user", previously appearing in the Act, is replaced by the expression "licensee". There is no actual change in the law, however, relating to use of registered marks by parties other than the proprietors. It will remain necessary to record licences, to preserve the validity of the marks.
The Kenya Industrial Property Institute are to be congratulated on these constructive measures. The author is grateful to the Managing Director (Registrar of Trade Marks), his officers and resident practitioners for the recent, cordial and constructive discussions. Instructions and questions about Kenya trade marks should be directed to Spoor & Fisher Jersey. Please communicate with your usual contact person or e-mail firstname.lastname@example.org
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