Trademark procedures and strategies: Kenya

Legal framework

Kenya’s legal framework for trademarks comprises:

• the Constitution;
• the Trademarks Act;
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement Concerning the International Registration of Marks;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• the Nairobi Treaty on the Protection of the Olympic Symbol; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Unregistered marks

Common law rights in unregistered trademarks are recognised under Section 5 of the Trademarks Act and may be enforced through a passing-off action. In a passing-off action, the proprietor of the unregistered mark must demonstrate that its trademark has acquired sufficient reputation through use for members of the public to be misled by a defendant’s conduct into thinking that the defendant’s goods are those of the proprietor.

Unregistered trademarks are also protected under Section 15A of the Trademarks Act on proof of their well-known status in Kenya. Well-known marks generally require a great degree of use (not necessarily direct use in Kenya) that has resulted in a high degree of knowledge or recognition of the mark in the relevant sector in Kenya.

Registered marks

Any person claiming to be the proprietor of a trademark that it uses or proposes to use may apply to register the mark.

Where an applicant appoints an agent to act on its behalf, the applicant must provide the agent with a power of attorney signed in the agent’s favour. This power of attorney need not be legalised.

A mark must contain at least one of the following to be registrable:

• the name of a company, individual or firm, represented in a particular manner;
• the applicant’s signature or that of its predecessor in business;
• an invented word or words; or
• a word or words having no direct reference to the character or quality of the goods and not being a geographical name or surname.

Any other distinctive mark not falling under these criteria is registrable only with evidence of distinctiveness. Collective and certification marks are also registrable.

The following are generally excluded from registration:

• marks whose use would be likely to deceive or cause confusion;
• marks that closely resemble registered trademarks and are proposed to be registered in respect of the goods or services covered under the prior similar registrations;
• touch, scent, taste and sound marks;
• the words ‘patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’, ‘entered at Stationer’s Hall’, ‘to counterfeit this is a forgery’ or similar words;
• representations of the head of state of any foreign state, or any colourable imitation thereof;
• the phrases ‘Red Cross’ or ‘Geneva Cross’ and representations of the Geneva and other crosses in red or the Swiss federal cross in white on a red background or silver on a red background, or such representations in a similar colour or colours;
• any specified emblems, likenesses and names under the National Flag, Emblems and Names Act (these may be registrable where the applicant obtains the written permission of the competent authority);
• any honour, award, title or abbreviation of a title created by the president;
• armorial bearings, insignia or flags of any foreign state or international intergovernmental organisation;
• any title or abbreviation of any international intergovernmental organisation; and
• marks consisting of or containing the Olympic symbol.

Procedures

Searches

For personal searches, the registry charges KSh1,000 (approximately $10) for every 15-minute period that the search exercise takes. The fees for official searches (see Table 1) as well as the registry rate chargeable for personal searches are exclusive of taxes and any professional fees chargeable by an agent.

Application and examination

On filing a trademark registration application and paying the filing fees (see Table 2) at the Trademarks Registry, the filed application is examined and a report issued thereafter indicating:

• approval of the application for advertisement;
• a requirement for a disclaimer of the right to the exclusive use of generic elements of the trademark (this disclaimer requirement must be either accepted within 30 days or challenged within 90 days of its issuance – both periods being extendable upon application); or
• a reasoned refusal of the application. This refusal can be challenged within 90 days of its issuance (this period is also extendable upon application).

Advertisement and opposition

After examination, approval and payment of advertisement fees, the application is advertised in the Industrial Property Journal. The law provides for an extendable period of 60 days from the date of advertisement during which any person may oppose the application. If the application is opposed, the registration process is halted and opposition proceedings are commenced. The grounds of opposition do not affect the timeframe within which the opposition should be filed.

Registration and renewal

If the application is not opposed, or if an opposition is filed but overcome by the applicant, a certificate of registration of the trademark is issued upon payment of the registration fee. In Kenya, trademarks are registered for 10 years and may be renewed indefinitely for further consecutive periods of 10 years.

After registration, trademarks may be removed from the register upon expiry or through cancellation or surrender.

Expiry

Upon expiry, a trademark may be removed from the register subject to conditions (if any) as to its restoration. However, under Section 23(4) of the Trademarks Act, such a trademark will – for a period of one year following removal – still be deemed to be on the register in case of an application for registration of a similar trademark. However, the registrar of trademarks or the High Court has discretion to ignore the expired registration during the one-year period in prescribed circumstances.

Before a trademark registration expires, the registrar must send two notices of the impending expiry to the proprietor of the registered trademark inviting it to renew the registration. The first notice must be sent between 30 and 60 days before expiry, while the second must be sent between 14 and 30 days before expiry.

If the notices are not heeded and the registration expires, the expiry will be published in the Industrial Property Journal. The proprietor may renew the trademark during the 30-day period following publication. If the registration is not renewed during this 30-day period, it may be removed from the register. However, the removed trademark may be restored upon application and payment of the renewal and restoration fees, subject to availability and any conditions that the registrar may impose.

Cancellation

An aggrieved party may apply for cancellation of a trademark registration on the grounds of non-use or wrongful entry in the register. To prove non-use, the aggrieved party must show that:

• the trademark was registered without any genuine intention of use in relation to the goods or services for which it is registered and there has been no such use from the date of registration until one month before the filing date of the cancellation application; or
• the trademark has not been put to genuine use in relation to the goods or services for which it is registered for a continuous period of five years or longer until one month before the filing date of the cancellation application.

To prove wrongful entry, the aggrieved party must show that the trademark was entered in the register without sufficient cause or that its continued registration is wrongful.

Surrender

A registered trademark may be surrendered, upon application by the proprietor, in respect of all or part of the goods for which it is registered. The proprietor must notify any interested parties of the proposed surrender at least 90 days before filing the surrender application. No notice is required where the interested parties have consented to or are not affected by the surrender. After the surrender has been registered, it is then advertised in the Industrial Property Journal.

Change of name or merger

The change of name of a registered proprietor (eg, through merger or special resolution) may be recorded against each trademark that is registered in the name of that proprietor. Such recordal requires the filing of an application in standard form (Form TM20) and payment of the necessary fees ($150 for the first trademark and $50 for each additional trademark).

Timeframes

Table 3 summarises the approximate timeframes for the conclusion of various procedures at the registry.

Enforcement

Opposition

Opposition proceedings may be instituted by any person before the registrar on the basis of prior registered or unregistered rights. The applicant for registration bears the burden of proving that the opposition is without merit. Evidence must be tendered through statutory declarations although the registrar has discretion to take oral evidence in addition to or instead of the evidence tendered by way of statutory declaration. The registrar’s determination is made based on the balance of probabilities. Opposition proceedings can only yield orders for the registration of the trademark for which an application for registration is made or for the refusal of such registration. The registrar also has discretion to award costs. Appeals against decisions of the registrar are heard by the High Court, subject to filing a notice of appeal at the registry within 60 days of the date of the decision, with possible further appeals being heard by the Court of Appeal.

Cancellation proceedings

A person that is aggrieved by the existence of a trademark on the register may apply to the registrar to have it cancelled. Cancellation proceedings may be founded on both registered and unregistered rights, and can yield only expunction orders and orders for costs. The aggrieved party bears the evidentiary burden.

The evidentiary and appellate rules which apply to oppositions also apply to cancellation proceedings.

Infringement proceedings

Trademark infringement proceedings may be instituted before the High Court only in respect of registered trademarks. These proceedings may be used to obtain:

• injunctions (both interim and permanent);
• damages;
• account of profits; and
• orders for delivery up or destruction of the offending goods.

Both documentary and oral evidence may be tendered in such proceedings and appeals are heard by the Court of Appeal.

Passing-off proceedings

Passing-off actions may be instituted by owners of both registered and unregistered trademarks. The comments on evidence, remedies and appeals made in respect of infringement proceedings above also to passing-off actions.

Damages

Section 36B of the Trademarks Act provides that where the proprietor of earlier rights in a trademark acquiesces for a continuous period of five years to the use in Kenya of a registered trademark that is confusingly similar to its own trademark, that proprietor loses the right to apply for cancellation or to restrain the use of the registered trademark in Kenya. However, such a proprietor may continue to use and exploit its earlier rights in its own mark.

Damages may be awarded with the aim of restoring the plaintiff to the position that it would have been in had the wrong not been committed. Nominal damages are awarded to a plaintiff as a matter of right where the plaintiff proves that an infringement of its rights has occurred. Where a plaintiff is of the view that it is entitled to a significant amount of damages, the plaintiff may seek an inquiry as to damages before the court, at its own risk as to costs. Punitive or exemplary damages are also awarded where the defendant’s conduct is shown to have been calculated to make a profit that would far outweigh any compensation payable and where there is injury to the plaintiff’s reputation. In infringement and passing-off proceedings, the burden of proof lies with the plaintiff, as the governing principle is that he who alleges must prove.

Additionally, trademark rights can be enforced through criminal proceedings instituted against parties that possess and trade in counterfeit products.

Proceedings before the registrar take on average two years to conclude, while the courts take two to three years to conclude infringement and passing-off cases. Actual timeframes may be considerably longer or shorter.

Ownership changes and right transfers

Registered trademarks may be assigned either partially or fully. Unregistered trademarks are similarly assignable if, at the time of assignment:

• they have been used in the same business as a registered trademark; and
• they are assigned at the same time and to the same person to which that registered trademark has been assigned or transmitted.

Registration of the assignment agreement is mandatory and failure to register renders it inadmissible in court as evidence of proof of title to the trademark, except as between the parties to the agreement, unless the court otherwise directs. There is no legalisation requirement for the assignment agreement.

Under the Trademarks Act, a person may be registered as a licensee under a full or partial trademark licence. There is no mandatory requirement to register licence agreements. However, it is beneficial to register such agreements, as upon registration:

• the licensee obtains capacity to sue for infringement; and
• the licensee’s permitted use of the trademark is deemed to be use by the registered proprietor and is a defence against any cancellation action brought against the trademark on the grounds of non-use.

A statutory declaration must be provided by the registered proprietor upon registration, indicating details about the licensor-licensee relationship. There is no legalisation requirement for the licence under the Trademarks Act.

Related rights

Where logos and artistic signs which are protected as artistic works under copyright law are used as trademarks in the course of trade, they may additionally be registered as trademarks.

Where such an overlap arises, the use and purpose of the logos and the nature and duration of the desired protection should be considered to determine the most suitable IP protection regime.

Online issues

The use of marks as domain names in the course of trade can constitute genuine trademark use. As such, unauthorised use in this regard can be redressed through trademark infringement or passing-off actions.

Additionally, where a party is aggrieved by the wrongful registration of a domain name by another entity, it may seek further redress through the following avenues.

KENIC Alternative Domain Name Dispute Resolution Policy

The Kenya Network Information Centre (KENIC) is charged with the administration of the country-code top-level domain (ccTLD) for Kenya (‘.ke’). KENIC’s Alternative Domain Name Dispute Resolution Policy (ADRP) provides for voluntary alternative dispute resolution proceedings for disputes relating to the Kenyan ccTLD. The process under the ADRP involves impartial mediation overseen by KENIC as a first step, followed by arbitration (if the mediation fails to achieve a resolution within 15 days). The arbitrator is agreed upon by the parties or – failing such agreement – appointed by a KENIC-accredited dispute resolution service provider. The arbitrator can:

• dismiss the dispute;
• order the transfer of the domain name registration (in case of abusive registrations); or
• cancel the domain name registration (in case of offensive registrations).

KENIC’s ADRP defines an ‘abusive registration’ as a domain name which either:

• was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to a complainant’s rights; or
• has been used in a manner that takes unfair advantage of a complainant’s rights.

An ‘offensive registration’, on the other hand, is defined as a domain name in which the complainant cannot necessarily establish rights, but whose registration is contrary to law, against good morals or likely to be offensive to any class of person.

Appeals are heard by a panel of three arbitrators appointed by a KENIC-accredited dispute resolution service provider. Where a party to proceedings before KENIC or the arbitrator initiates court proceedings in relation to the domain name dispute that is before KENIC or the arbitrator, the mediation or arbitral proceedings are suspended immediately.

Legal proceedings

The courts can also adjudicate disputes over abusive or offensive domain name registrations that relate to the Kenyan ccTLD and other generic top-level domains (gTLDs), and can order the transfer of abusive registrations or cancellation of offensive registrations.

Uniform Domain Name Dispute Resolution Policy

Domain name disputes may also be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the rules thereunder. All registrants that register domain names in top level domains with registrars that subscribe to the UDRP accept the terms of the UDRP, which are invariably incorporated by reference into the domain name registration agreement between the registrar and the registrant. Clause 4 of the UDRP requires registrants to submit to mandatory administrative proceedings adjudicated by Internet Corporation for Assigned Names and Numbers approved dispute resolution service providers such as the World Intellectual Property Organisation’s Arbitration and Mediation Centre.

Anjarwalla & Khanna

3rd Floor

The Oval, Junction Off Ring Road Parklands & Jalaram Road, Westlands

PO Box 200-00606, Sarit Centre

Nairobi

Kenya

Tel +254 20 364 0000

Web www.africalegalnetwork.com/ken...

Anne Kiunuhe

Partner

[email protected]

Anne Kiunuhe is a partner at Anjarwalla & Khanna (A&K). She co-heads the firm’s IP group. She is an advocate of the High Court and a member of the Law Society of Kenya with over 10 years of experience in a wide range of IP matters, M&A, IT, telecommunications and competition law. She is a regular speaker at corporate law conferences, an ardent writer on legal topics and the editor of Legal Notes, a newsletter published by the Africa Legal Network (an alliance of top-tier law firms in 13 African jurisdictions). She co-authored the exclusive Kenyan chapter of the Intellectual Property Review (2016), a leading global publication on IP laws from around the world, and is ranked by Chambers Global.

Shem Otanga

Senior associate

[email protected]

Shem Otanga is a senior associate in the corporate department at Anjarwalla & Khanna (A&K) and a member of A&K’s IP group. He is an advocate of the High Court of Kenya with a specialist practice spanning the fields of intellectual property, media, telecommunications and data protection. He has wide experience in handling contentious opposition and cancellation proceedings in respect of high-value well-known trademarks.

He co-authored the exclusive Kenyan chapter of the Intellectual Property Review (2016) with Anne Kiunuhe and is a member of the Law Society of Kenya.