Kenya: trade marks in Africa – your questions answered
Trade mark activity is growing rapidly in Africa, both as regards protection and enforcement. Yet there is still a great deal of uncertainty. This is the next in our series of country-specific updates. Here we focus on Kenya.
With a population of 48 million and a GDP of US$70 billion, Kenya’s economy is the 72nd largest in the world, and it encompasses, inter alia, agriculture, mining, tourism and financial services. Kenya is regarded as the East African hub for financial, communications and transport services. As is the case in many African countries, imports in Kenya dwarf exports - US$13.6 billion per annum vs US$5.7 billion.
Like many other African countries, Kenya has considerable problems with counterfeit goods. But, unlike many others, Kenya takes counterfeiting very seriously, and it has specific counterfeiting legislation, the Anti-Counterfeit Act 2008. Although Kenya’s trade mark legislation, the Trade Marks Act (Chapter 506), is showing its age, a new bill has been put forward for consideration.
Anyone claiming to be the owner and who uses or proposes to use that trade mark can file an application.
A mark can be a distinguishing guise, slogan, device, brand, heading, ticket, name, signature, word, letter, numeral or any combination, whether in two or three-dimensional form. In order to be registrable, a mark must either be adapted to distinguish or it must be capable of distinguishing. The register is divided into Part A (for marks that are adapted to distinguish) and Part B (for marks that are capable of distinguishing). A mark that is confusingly similar to an earlier mark can be refused. A mark can also be refused if it is similar to a well-known mark – Kenya does give specific protection to well-known marks as per the Paris Convention.
As for rights, the owner can stop the use of the same or a confusingly similar mark in relation to goods or services covered by the registration. Registration is a defence to an infringement claim. Other defences include prior use and genuine use of a business name or a description of the goods. A trade mark owner who is successful in an infringement action will be entitled to an injunction and damages. Trade mark infringement can also constitute a criminal offence.
There is no online filing, the International Classification of Goods and Services applies, multi-class filing is possible, a Power of Attorney is required (no notarisation), as is an English translation of the priority document.
There is examination as to both form and substance, including both registrability and possible clashes with prior rights.
A trade mark application that has been accepted is published.
A registration lasts for 10 years from the filing date (or priority date if applicable), and it can be renewed indefinitely for 10-year periods. A registration can be cancelled in the case of non-use for a continuous period of five years or longer. Licensing of trade marks is allowed and a licence can be recorded against the registration. In cases where the licence is recorded, use by the licensee can be used to defeat a non-use cancellation action.