A Trade Mark is a sign which serves to distinguish the goods of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours etc. The sign may consist also of combinations of any of the said elements. A Trade Mark 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. The Trademarks Act (Cap 506) 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.
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 trademarks 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. Here we should also add that registration is not mandatory, using a mark for a certain length of time can establish your ownership through Common Law-but it is highly advisable to register a trademark. Registration is direct evidence of one’s ownership and enables you to more easily protect your rights, should someone challenge them. In a dispute, the burden is on the challenger of the registered trademark to prove ownership. Use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it. A registered trademark is also a valuable asset for business expansion especially so through licensing franchises.
SERVICE MARK
A Service Mark is a sign which serves to distinguish services of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of either of the characteristics named above in trademarks.
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 is 100% pure wool, or the Kenya Bureau of Standards certification mark.
DISTINGUISHING GUISE
A distinguishing guise identifies the unique shape of a product or its package. If for example, you manufactured chocolate moulded to look like a rabbit, you might want to register the rabbit shape as a trademark as a distinguishing guise.
REGISTRABILITY
In order for a trademark (other than a certification mark) to be registrable in Kenya, under the Trade Marks Act (Cap 506) 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 trademark parts of 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. 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.
APPLICANT (WHO CAN REGISTER A TRADEMARK?)
An individual, a company, a partnership, a society, a co-operative or any lawful association can apply for a trademark provided they meet the requirements of the Trade Marks Act.
SHOULD I REGISTER A TRADEMARK AS A WHOLE OR REGISTER THE DIFFERENT ELEMENTS?
Whether to register the mark as a whole or to register specific elements of the mark depends on what specific element(s) you consider “unique” and want to prevent others from potentially using, duplicating or creating a “likelihood of confusion?”. If you want to prevent anyone from using any portion of your trademark, then paradoxically, registering the entire thing will not protect all the elements individually. Registering the entire trademark will only prevent someone else from creating a likelihood of confusion for the entire mark, not specific elements within the mark. So, you may need to register the elements you consider unique eg the tagline as separate marks so as to protect them (if that’s what you want to achieve). This, of course, would mean more on the costs involved.
THE ESTIMATED TIMELINE AND PROCESS FOR REGISTRATION
(Adapted from http://www.kipi.go.ke/index.php/trademarks )
Contact us at law@knkadvocates.co.ke for more information.