The Trade Marks Act of 2002 provides for the registration and protection of Trade Marks in Kenya.  The Act allows for the  registration of, inter alia, logos, three dimensional marks, word and device marks. The Kenya Industrial Property Institute is the statutory Trade Marks Office and handles all matters involving the filing, prosecution and registration of Trade Marks. The Registrar of Trade Marks hears and determines opposition and expungement proceedings with the High Court enjoying appellate jurisdiction on such decisions. Wanam’s Trade Marks practice involves, inter alia:

Trade Marks Searches
While it is not mandatory for a search on the registrability of a trade mark to be conducted before its registration, it is recommended as it gives the applicant an idea on the possibility of a trade mark application being successful and also potentially helps the applicant save on the official application fee which is not refundable in the event of the application being refused. Wanam provide trade marks search services on the Trade Marks Offices in Kenya and East Africa.

Trade Marks Registrations
In Kenya on the making of an application for the registration of a trade mark, the same is examined by a trade marks examiner and if the examiner is satisfied with the viability of the trade mark’s registration the same is allowed to proceed for advertisement in the Intellectual Property Journal. If after sixty (60) days from the date of the advertisement there has been no opposition proceedings lodged against the registration of the trade mark then the trade mark shall be registered and a certificate of trade marks registration duly issued.

Trade Marks Renewals
A trade mark once registered in Kenya is valid for a period of ten (10) years and is renewable for further periods of ten (10) years. Wanam handles all the requisites for the renewal of trade marks including sending out reminders, payment of renewal fees and the forwarding of renewal certificates.

Assignments
Wanam’s services on trade marks assignments include advice on assignment, drawing of deeds of assignments and recordal of the assignment. 

Licensing
Wanam provide advice on licensing agreements, drawing of license agreements and registration of the same.

Registered Users
A registered use of a trade mark enjoys several benefits including the right to institute civil action on infringement of a trade mark in the event that the proprietor of the trade mark neglects to do the same. A registered user must be recorded in the trade marks register as such on application to the Trade Marks office.

Opposition Proceedings
Once an application for the registration of a trade mark has been approved by the trade marks examiner the mark has to be advertised in the Intellectual Property Journal and can only be registered if no opposition proceeding is commenced against its registration within a period of sixty (60) days. This period can be extended on application, made on acceptable grounds, to the Register of trade marks.

Opposition proceedings are heard and determined by the Trade Marks Office with appeal lying to the High Court. Wanam represent clients in opposition proceedings both before the Trade Marks office and at the appellate level.

Expungement and Cancellation Proceedings
Once a mark has been registered it can be expunged from the register and or its registration cancelled on successful application either to the Registrar of trade marks or the High Court of Kenya depending on the circumstances.

Trade Marks Infringement and Litigation
Under the Trade Marks Act, only registered trade marks proprietors can successfully claim for trade marks infringement. The High Court has original jurisdiction for suits for trade marks infringement with the Court of Appeal having appellate jurisdiction. Thus a trade marks propreitor would need to institute a suit before the High Court.

The remedy for infringement of unregistered trade marks lies in a suit for passing off and unlawful competition – common law remedies.

Change of Name and/or Address
Whenever there is a change of name and or address of the registered proprietor of a trade mark, the same should be recorded with the Trade Marks Office on an application.