INTRODUCTION
A Trademark 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, colors or combination of colors etc. The sign may consist also of combinations of any of the said elements.
A Trademark 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. Section 2 of the Trademarks Act 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.
Distinguishing guise
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 trademark as a distinguishing guise.
Why register a Trademark?
Registration of a trademark 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. That is why it is very important to conduct a Trademark preliminary search.
A registered trademark is also a valuable asset for business expansion especially so through licensing franchises.
Categories of Marks
- 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)
Certification Mark
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.
Registration
In order for a trade mark (other than a certification mark) to be registered in Kenya, under the Trade Marks Act laws of Kenya, 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
Disclaimers
A disclaimer is a statement indicating that a certain word or portion of a trademark 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 trademark.
Who can register a Trademark?
They include: –
- An individual
- A company
- A partnership
- A society
- A co-operative
- Any lawful association
- For a foreign applicant a local agent must process the application
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 13th edition.
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.
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