What Is a Trade Mark?
A trade mark is a sign used to distinguish the goods or services of one business from those of another. Trade marks can take different forms, including words, names, logos, slogans, letters, numbers and other distinctive signs capable of identifying the source of goods or services.
For a business, a trade mark is therefore more than just a name or logo. It can become an important commercial asset associated with the reputation and goodwill that a business builds over time. This is why trade mark protection should ideally be considered before significant investment is made in building a brand.
Why Register a Trade Mark?
Registering a trade mark can provide a business with a stronger basis for protecting its brand against unauthorised use. It can also help establish ownership of the mark and support commercial activities such as licensing, franchising and expansion.
For example, if you have invested significantly in developing a product name and building recognition around it, discovering later that another business has rights in a similar mark could be costly and disruptive. Registration is therefore not simply an administrative exercise. It is part of protecting the value you are building in your brand.
What Can You Register as a Trade Mark?
Before applying, it is important to identify exactly what you want to protect. Depending on the circumstances, this could include:
- A business or product name
- A logo or other graphic device
- A slogan or tagline
- A combination of words and design elements
- Another distinctive sign capable of functioning as a trade mark
Not every name or sign will necessarily qualify for registration. A mark generally needs to have sufficient distinctiveness and must not fall within grounds for refusal under the applicable law. The strength of the mark also matters commercially. A highly distinctive brand can generally provide a stronger foundation for trade mark protection than a term that merely describes the goods or services being offered.
What to Consider Before Registering Your Trade Mark
The application itself is only one part of the process. Some of the most important decisions should be made before filing.
1. Conduct a Trade Mark Search
Before investing in a new brand, you should establish whether the proposed mark is already registered or whether there are earlier marks that could create a conflict. KIPI currently provides for a preliminary search using Form TM27, and its guidance recommends conducting a search before proceeding with an application.
However, a useful trade mark search should not necessarily stop at asking whether an identical name already exists. Similar marks can also create problems depending on factors such as how similar the marks are, the goods and services involved, the relevant market, and the likelihood of confusion. A search can therefore help you identify potential problems before you spend time and money building a brand around a name that may be difficult to protect. Assessing likelihood of confusion is a judgment call that benefits from professional review, not just a database check.
2. Decide What You Want to Protect
A business may have several elements that make up its brand. For example, a company might operate under the name ABC, use a particular logo and market its products using the slogan "Easy as 123." These may represent different trade mark assets and should not automatically be treated as though registration of one protects everything. You should therefore consider whether you are seeking protection for the name, the logo, the slogan, or a combination of these. The scope of protection will also depend on the goods and services for which the mark is registered.
3. Choose the Correct Goods and Services
Trade marks are registered in relation to particular goods and services using the Nice Classification system. Choosing the appropriate class or classes is therefore an important part of the application. A business may sell physical products while also providing services under the same brand. Simply registering the brand in one class does not necessarily mean the business has protection across every activity it undertakes.
The classes should therefore reflect the actual and intended commercial use of the mark, rather than being selected solely because they appear broadly relevant. Getting classification wrong is one of the more common and costly mistakes businesses make at this stage.
4. Determine Who Should Own the Trade Mark
Ownership is another issue that should be considered before filing. For example, if a business is operated through a company, should the trade mark be registered in the founder's individual name or in the company's name? This can become particularly important where the brand is expected to become a significant business asset, or where the business may eventually be sold, licensed, franchised or reorganised. Getting ownership right at the beginning can avoid unnecessary complications later.
5. Consider Your Future Markets
If Kenya is only the first market for your business, it is worth considering your broader trade mark strategy before filing. A Kenyan registration does not automatically protect your brand throughout Africa or the rest of the world. If you expect to expand into other countries, the markets you intend to enter may influence how and where you should seek protection.
How to Register a Trade Mark in Kenya
The Kenyan trade mark registration process can broadly be broken down into the following stages.
Conduct a Trade Mark Search
While not compulsory, this is advised. The first step is to search the proposed mark to identify existing registrations or applications that may present a conflict. KIPI's current guidance identifies TM27 as the relevant search form and lists a search fee starting at KSh 3,000 for Kenyan individuals and companies, and USD 150 for foreign individuals and entities. A search does not eliminate all risk, but it can significantly improve the decision-making process before an application is filed.
Prepare Your Application
Once the mark has been assessed, the application can be prepared. This generally involves providing the applicant's name and address, the proposed trade mark, a reproduction of the mark where applicable, the relevant goods and services, the applicable Nice Classification, ownership information, and other supporting documentation required for the application. Where the applicant is based outside Kenya, local representation is required and an agent will need to be appointed. The application for registration is made using Form TM2.
File the Application with KIPI
The completed application is submitted to KIPI together with the applicable official fees. KIPI's current published guidance states that an application for registration is made using TM2, and lists a filing fee starting at KSh 4,000 for locals and a foreign fee of USD 200. The exact requirements and fees should be confirmed at the time of filing, as official procedures and fee schedules can change.
Examination
After filing, the application goes through examination to determine whether the mark meets the applicable requirements for registration, including whether there are grounds that prevent the mark from being registered. An application may encounter an objection or other issue during examination, in which case the applicant may need to respond or amend the application depending on the nature of the objection. This is one reason why trade mark registration should not be viewed simply as submitting an application and waiting for a certificate.
Publication and Opposition
If the application is accepted, it is advertised to give third parties an opportunity to oppose the registration. Under the Trade Marks Rules, a person may oppose an application within 60 days from the date of advertisement. An opposition may arise, for example, where a third party believes that registration of the proposed mark would conflict with its existing rights. If an opposition is filed, the application does not simply proceed automatically to registration. The opposition must be dealt with through the applicable process.
Registration
If the application is not opposed within the applicable period, or if an opposition is decided in favour of the applicant, the mark can proceed to registration. The Registrar then issues a certificate of registration. Under the Trade Marks Act, registration lasts for 10 years and can subsequently be renewed for further 10-year periods.
How Much Does It Cost to Register a Trade Mark in Kenya?
The cost of registering a trade mark consists of official fees as well as any professional fees charged for assistance with the process. KIPI's official fees are as follows for one mark in one class:
| Stage | Local Fee | Foreign Fee |
|---|---|---|
| Trade mark search (TM27) | KSh 3,000 | USD 150 |
| Application (TM2) | KSh 4,000 | USD 200 |
| Advertisement | KSh 3,000 | USD 60 |
| Registration | KSh 2,000 | USD 150 |
These are KIPI's currently published fees. As with all statutory timelines and fees referenced in this guide, the position is subject to change and should be confirmed at the time of filing.
How Long Does Trade Mark Registration Take in Kenya?
KIPI's Citizens Service Delivery Charter sets out its own target timeframe for each stage of the process. A trade mark application typically moves through five stages: the search outcome is issued within 7 working days; the examination report follows within 30 working days; once an application clears examination, publication in the Industrial Property Journal takes place within 60 working days; publication opens the 60-day statutory opposition window, during which third parties may object; and if the application is not opposed, the certificate of registration is issued within 21 working days.
How Long Does a Trade Mark Last in Kenya?
A registered trade mark in Kenya is protected for an initial period of 10 years, and can then be renewed for further periods of 10 years. Trade mark owners should therefore keep track of renewal dates to avoid allowing an important registration to lapse.
Does a Kenyan Trade Mark Protect Your Brand Across Africa and the Rest of the World?
No. Trade mark rights are generally territorial. A Kenyan trade mark registration does not automatically give you trade mark protection in every other African country or the rest of the world.
This becomes particularly important as businesses expand. For example, a business that has successfully registered its brand in Kenya and later begins operating in Uganda, Tanzania, Nigeria, South Africa or other markets should consider whether it also needs trade mark protection in those jurisdictions. The appropriate approach will depend on the countries involved and the filing systems available in those markets.
How Can You Protect Your Trade Mark in Other African Countries?
There is no single trade mark registration that automatically covers the entire African continent. Depending on your expansion plans, there are several possible routes to consider.
National Trade Mark Registration
A business can apply directly for trade mark protection in an individual country. This may be appropriate where the business has identified a particular market as strategically important, or where the relevant country is not covered by a regional or international filing route that suits the business.
Regional Trade Mark Systems
Some African countries participate in regional intellectual property systems. For example, ARIPO's Banjul Protocol provides a mechanism for trade mark protection in its participating states. However, it is important to check which countries are currently participating rather than assuming that ARIPO membership automatically means a country is covered by the Banjul Protocol. ARIPO's current materials specifically refer to the Banjul Protocol contracting states as the countries that can be designated in an ARIPO trade mark application.
OAPI provides another regional framework for intellectual property protection in its member states.
Choosing between these routes is rarely straightforward, and the wrong choice can mean protection in the wrong markets.
The appropriate regional route therefore depends on the particular markets in which protection is required.
The Madrid System
The Madrid System provides another route for businesses seeking international trade mark protection. Kenya has been a member of the Madrid Agreement and Madrid Protocol since 1998. The system allows a trade mark owner to seek protection in multiple participating countries through a centralised international registration system, and WIPO currently states that the Madrid System can be used to seek protection in more than 130 countries.
However, an international registration does not mean a mark is automatically protected in every designated country. Each designated country applies its own domestic law when determining whether protection can be granted.
Which Trade Mark Registration Route Is Right for Your Business?
The right filing strategy depends on more than simply counting the number of countries in which you want to operate. You may need to consider where the business currently operates, where it plans to expand, which countries are commercially important, whether those countries participate in a relevant regional or international system, the goods and services for which protection is required, the costs associated with each route, and the long-term plans for the brand.
For a business operating only in Kenya, a Kenyan national registration may be sufficient. For a business planning expansion into several African or international markets, it may make sense to consider the broader trade mark portfolio before filing. The cheapest filing route is not necessarily the most appropriate route if it does not protect the markets that matter to the business.
Common Questions About Trade Mark Registration in Kenya
Protect Your Brand Before You Build It
Trade mark registration is more than a procedural step. The decisions made before filing, including selecting a distinctive mark, identifying the right goods and services, determining ownership and considering future markets, can affect the value and effectiveness of your protection.
For businesses building brands in Kenya, the starting point may be a Kenyan trade mark registration. But where expansion into other African markets is part of the plan, trade mark protection should be considered as part of the wider business strategy.
Stratedge Africa assists businesses and international clients with trade mark searches, registration and broader IP protection strategies in Kenya and relevant African markets.