	Trademarks
	Kenya
	(Africa) Firm Bowmans Contributors John Syekei Updated 22 Mar 2021
What is the system for trademark protection in your country?	The system for trademark protection in Kenya includes the following: Registration Common law - the Trade Marks Act recognizes common law rights in unregistered marks and recognizes the rights of action against any person for passing off or the remedies in respect thereof.
To which international treaties does your country belong?	Kenya belongs to the following international treaties: Paris Convention Madrid Agreement Madrid Protocol Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks Nairobi Treaty on the Protection of the Olympic Symbol Trademark Law Treaty ("*TLT") Singapore Treaty on the Law of Trademarks*
What are the benefits of registering a trademark in your country?	The benefits of registering a trademark in Kenya include: It prevails over common law rights It entitles the proprietor to bring an infringement action Other: It protects the proprietor against unauthorized use of the mark; enables the proprietor of the mark to commercialize their intellectual property rights.
Is it possible to obtain registration for the following types of marks under the registration system in your country?	Service marks Yes Defensive marks Yes, the trademark must consist of an inventive word(s) that has become so well known with respect to the goods in respect of which it is registered and in relation to which it has been used. Collective marks Yes, the mark must be capable of distinguishing in the course of trade, the goods or services of persons who are members of an association, from goods or services of persons who are not members of such association. It is also possible to register geographical names or other indicators of geographical origin. Certification marks Yes, the mark must be adapted in relation to any goods to distinguish in the course of trade of goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristics from goods not so certified. The mark is not registerable in the name of the person who carries on a trade in the goods of the kind certified. The Registrar will have regard to the extent to which the mark is inherently adapted to distinguish in relation to the goods in question and by reason of the use of the mark or of any other circumstance the mark is in fact adapted to distinguish in relation to the goods in question. Well-known marks Yes, the trademark should be entitled to protection under the Paris Convention or the World Trade Organization Agreement as a well-known mark. The proprietor of the mark must be a national of the Convention country or be domiciled in or has a real and effective industrial or commercial establishment in a convention country, whether or not that person carries on business or has any goodwill in Kenya. Series marks Yes, a representation of each trademark in the series should be included in the application. Marks in a different language or characters other than Roman characters Yes, where the trademark contains a word or words in characters other than Roman, there shall be endorsed on the application form a sufficient transliteration and translation of each of the words and such endorsement is to state the language to which the word belongs to and shall be signed by the applicant or agent. For words in another language other than English, the Registrar may request for an exact translation together with the names of the language. Non-traditional marks: Sound marks No Non-traditional marks: Smell marks No Non-traditional marks: Position marks No Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color) Yes, a trademark may be limited in whole or part to one or more specified colors, and such limitation is taken into consideration to determine the distinctive character of the trademark. An application for registration of a trademark of which color is claimed as an element shall include a statement to that effect. Non-traditional marks: Shape or three-dimensional marks Yes, an application for registration of a trademark that is three-dimensional shall include a statement to that effect.
What are the documents and information required for filing a trademark application in your country?	Documents and information required to file a trademark application in Kenya include: Name and address of the applicant Representation of the trademark Goods and services and the class(es) for which the trademark is to be registered) Power of Attorney Other: Address for service if different from the address of the applicant. Any disclaimer with respect to disclaiming the right to exclusive use of a word or letter or color etc, as may be required by the Registrar may be provided for.
Are multi-class applications permitted in your country?	Yes, multi-class applications are permitted in Kenya. There is no maximum number of classes prescribed for each application.
Is there substantive examination of trademarks?	Yes, there are substantive examinations of trademarks in Israel on the following grounds: Substantive grounds Relative grounds
What are the absolute grounds for refusal?	Absolute grounds for refusal of a trademark in Kenya include: Mark has direct reference to the character or quality of the goods or services Mark is not distinctive
What are the relative grounds for refusal?	Relative grounds for refusal of a trademark in Kenya include: There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark. Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark. Other: Mark consists of a geographical name or surname.
What is the time period from application to registration for a straightforward trademark application in your country?	The time period from application to registration in Kenya is between 12-18 months.
Is late renewal of a trademark registration permissible in your country?	Yes, late renewal of trademark registration is permissible in Kenya. The Registrar is required to send a 60-day notice to the proprietor of the mark, reminding them of the renewal due date and the conditions as to payment of fees. If the renewal fees are not remitted after the lapse of the 60 days, the Registrar may issue a further 30-day notice to the proprietor of the mark. The second 30-day notice is advertised in the Kenya Industrial Property Institute Journal and if a renewal application is filed within 30 days, then a late surcharge for renewal is attracted and has to be paid; and the mark is not removed from the Register.
Does evidence of use need to be submitted to the trademark office at any time in order to maintain an application for registration or a registration of a trademark in your country?	No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Kenya.
Are trademark licensees required to record themselves with the Registrar?	No, trademark licensees are not required to record themselves with the Registrar in Kenya, however, it is recommended. The proprietor of the mark and the licensee shall apply in writing to the Registrar in the prescribed manner and shall furnish the Registrar with a statutory declaration made by the proprietor and approved by the Registrar, giving details of the relations between the parties, illustrating the degree of control over the permitted use, exclusivity or non-exclusivity of the license, the goods or services for which registration is sought, the time period of the license etc. The Registrar may also require such further documents, information or evidence as may be required
What are the available enforcement methods in your country?	Available enforcement methods in Kenya include: Civil enforcement Infringement action Passing off Administrative enforcement Border or other administrative enforcement measures
Are there any peculiarities not mentioned above in the system of protection for trademarks in your country of which it is important for clients to be aware?	None identified.

Trademarks

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What is the system for trademark protection in your country?

The system for trademark protection in Kenya includes the following:

Registration
Common law - the Trade Marks Act recognizes common law rights in unregistered marks and recognizes the rights of action against any person for passing off or the remedies in respect thereof.

To which international treaties does your country belong?

Kenya belongs to the following international treaties:

Paris Convention
Madrid Agreement
Madrid Protocol
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks
Nairobi Treaty on the Protection of the Olympic Symbol
Trademark Law Treaty ("TLT")
Singapore Treaty on the Law of Trademarks

What are the benefits of registering a trademark in your country?

The benefits of registering a trademark in Kenya include:

It prevails over common law rights
It entitles the proprietor to bring an infringement action
Other: It protects the proprietor against unauthorized use of the mark; enables the proprietor of the mark to commercialize their intellectual property rights.

Is it possible to obtain registration for the following types of marks under the registration system in your country?

Service marks

Yes

Defensive marks

Yes, the trademark must consist of an inventive word(s) that has become so well known with respect to the goods in respect of which it is registered and in relation to which it has been used.

Collective marks

Yes, the mark must be capable of distinguishing in the course of trade, the goods or services of persons who are members of an association, from goods or services of persons who are not members of such association. It is also possible to register geographical names or other indicators of geographical origin.

Certification marks

Yes, the mark must be adapted in relation to any goods to distinguish in the course of trade of goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristics from goods not so certified. The mark is not registerable in the name of the person who carries on a trade in the goods of the kind certified. The Registrar will have regard to the extent to which the mark is inherently adapted to distinguish in relation to the goods in question and by reason of the use of the mark or of any other circumstance the mark is in fact adapted to distinguish in relation to the goods in question.

Well-known marks

Yes, the trademark should be entitled to protection under the Paris Convention or the World Trade Organization Agreement as a well-known mark. The proprietor of the mark must be a national of the Convention country or be domiciled in or has a real and effective industrial or commercial establishment in a convention country, whether or not that person carries on business or has any goodwill in Kenya.

Series marks

Yes, a representation of each trademark in the series should be included in the application.

Marks in a different language or characters other than Roman characters

Yes, where the trademark contains a word or words in characters other than Roman, there shall be endorsed on the application form a sufficient transliteration and translation of each of the words and such endorsement is to state the language to which the word belongs to and shall be signed by the applicant or agent. For words in another language other than English, the Registrar may request for an exact translation together with the names of the language.

Non-traditional marks: Sound marks

Non-traditional marks: Smell marks

Non-traditional marks: Position marks

Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)

Yes, a trademark may be limited in whole or part to one or more specified colors, and such limitation is taken into consideration to determine the distinctive character of the trademark. An application for registration of a trademark of which color is claimed as an element shall include a statement to that effect.

Non-traditional marks: Shape or three-dimensional marks

Yes, an application for registration of a trademark that is three-dimensional shall include a statement to that effect.

What are the documents and information required for filing a trademark application in your country?

Documents and information required to file a trademark application in Kenya include:

Name and address of the applicant
Representation of the trademark
Goods and services and the class(es) for which the trademark is to be registered)
Power of Attorney
Other: Address for service if different from the address of the applicant. Any disclaimer with respect to disclaiming the right to exclusive use of a word or letter or color etc, as may be required by the Registrar may be provided for.

Are multi-class applications permitted in your country?

Yes, multi-class applications are permitted in Kenya. There is no maximum number of classes prescribed for each application.

Is there substantive examination of trademarks?

Yes, there are substantive examinations of trademarks in Israel on the following grounds:

Substantive grounds
Relative grounds

What are the absolute grounds for refusal?

Absolute grounds for refusal of a trademark in Kenya include:

Mark has direct reference to the character or quality of the goods or services
Mark is not distinctive

What are the relative grounds for refusal?

Relative grounds for refusal of a trademark in Kenya include:

There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark.
Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark.
Other: Mark consists of a geographical name or surname.

What is the time period from application to registration for a straightforward trademark application in your country?

The time period from application to registration in Kenya is between 12-18 months.

Is late renewal of a trademark registration permissible in your country?

Yes, late renewal of trademark registration is permissible in Kenya. The Registrar is required to send a 60-day notice to the proprietor of the mark, reminding them of the renewal due date and the conditions as to payment of fees. If the renewal fees are not remitted after the lapse of the 60 days, the Registrar may issue a further 30-day notice to the proprietor of the mark. The second 30-day notice is advertised in the Kenya Industrial Property Institute Journal and if a renewal application is filed within 30 days, then a late surcharge for renewal is attracted and has to be paid; and the mark is not removed from the Register.

Does evidence of use need to be submitted to the trademark office at any time in order to maintain an application for registration or a registration of a trademark in your country?

No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Kenya.

Are trademark licensees required to record themselves with the Registrar?

No, trademark licensees are not required to record themselves with the Registrar in Kenya, however, it is recommended. The proprietor of the mark and the licensee shall apply in writing to the Registrar in the prescribed manner and shall furnish the Registrar with a statutory declaration made by the proprietor and approved by the Registrar, giving details of the relations between the parties, illustrating the degree of control over the permitted use, exclusivity or non-exclusivity of the license, the goods or services for which registration is sought, the time period of the license etc. The Registrar may also require such further documents, information or evidence as may be required

What are the available enforcement methods in your country?

Available enforcement methods in Kenya include:

Civil enforcement
- Infringement action
- Passing off
Administrative enforcement
Border or other administrative enforcement measures

Are there any peculiarities not mentioned above in the system of protection for trademarks in your country of which it is important for clients to be aware?

None identified.

Trademarks

Kenya

Trademarks

Kenya

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