Trade Marks
A Trade Mark is a sign which serves to distinguish the goods and services of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more distinctive words, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours etc. The sign may consist also of combinations of any of the said elements. A Trade Mark can be a word, a symbol, a design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the market place. The Trade’Marks Act (Cap 506) Sec 2, describes a mark as a 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.
A distinguishing guise identifies the unique shape of a product or its package. If for example one manufactures chocolate mould to look like a rabbit, one might want to register the rabbit shape as a trade mark as a distinguishing guise.
Registration of a trade mark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempted to ride on the goodwill of your mark. It enables you to more easily protect your rights more easily in case someone challenged them since the burden is on the challenger to prove any rights in a dispute. The process of registration with its thorough checks for conflicting trade marks ensures that you have a unique mark that does not resemble any other parties mark and in so doing helps one avoid infringement of other parties; rights. Registration is not mandatory, using a mark for a certain length of time can establish your ownership through Common Law-but it is highly advisable to register a trade mark. Registration is direct evidence of ones ownership and enable you to more easily protect your rights, should someone challenge them. In a dispute, the burden is on the challenger of the registered trade mark to prove ownership. Use of an unregistered trade mark can lead to a lengthy, expensive legal dispute over who has the right to use it. A registered trade mark is also a valuable asset for business expansion especially so through licensing franchises.
Categories of Marks (check one):
- an ordinary trade mark
- a certification trade mark
- a defensive trade mark (if a defensive trade mark is applied for a statement of case and statutory declaration as required under r. 36(1) must accompany this application)
- a collective trade mark (if a collective trade mark is applied for a copy of the rules governing the use of the trade mark must accompany this application)
A certification mark helps to identify goods or services which meet a defined standard. Certification marks are owned by one person but licensed to others to identify good or services which meet the defined standard. Examples are the wool mark used on clothing that are 100% pure wool, or the Kenya Bureau of Standards certification mark.
In order for a trade mark (other than a certification mark) to be registrable in Kenya, under the Trade Marks Act (Cap 506) it must contain or consist of at least one of the following essential particulars: -
- The name of a Company, Individual or Firm , represented in a special or particular manner
- The signature of the applicant for registration or some predecessor in his business
- An invented word or invented words;
- A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.
- Any other distinctive mark.
A disclaimer is a statement indicating that a certain word or portion of a trade mark is not protected. This means that it is possible to have in your trade mark parts or words that are generic or commonly used in the trade for those products with the understanding that you have no monopoly over it and thus no right to bar others from using those words under Sec 17 of the Trade Marks Act.
An example here would be Pamoja Mineral Water; the disclaimer would cover the words mineral water. Having a disclaimer does not however mean that you can never use the disclaimed portion as part of your mark.
Other additional information including, translations, transliterations, marks in series, colour limitation, priority claim, 2D or 3D marks are a requirement where need be when filing for a trade mark.
An individual, a company, a partnership, a society, a co-operative or any lawful association can apply for a trade mark provided they meet the requirements of the Trade Marks Act. For a foreign applicant the application must be processed by a local Agent.
Nice Classification:
The marks are classified in accordance with the “International Classification of Goods and Services” as regards Registration of Marks, means the classification, in accordance with the Nice Agreement of the 15th June,1957, Vas revised and amended from time to time, establishing an international classification of goods and services currently in the 13 th edition.
Download Nice Classification 12 Edition here
Spectrum of Distinctiveness:
Not all marks are registrable per se. Certain requirements are to be adhered to. The more distinctive a mark is the less infringed and such marks which are suggestive, arbitrary and coined or fanciful.
Generic marks are not protected while descriptive marks may be protected if the same meets the threshold of examination.
Note: symbols such as ®, SM or TM are used only when the mark is registered under the Act.
A Service Mark is a sign which serves to distinguish services of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of either of the characteristics named above in trade marks.