Before applying for the registration of a trademark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark which could be confused with the intended trademark. An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on Form TM 27.
Search is not mandatory but is advisable for the following two reasons; It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in its present form. It will also help one avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.
Applying for registration
A person claiming to be the proprietor of a trademark, used or proposed to be used by him, and who is desirous of registering it should apply to the Registrar on Form TM 2 accompanied by seven (7)representations of the mark.
Foreign applicants are required to file through an agent and thus the application should be accompanied by the form of authorization Form TM 1 or the power of attorney duly completed and signed and must have a duty stamp affixed on it .
The application should also be accompanied by Form TM 32 (for entry of the address of service in Kenya). The applicant is required to file a separate application for each mark in each different class.
Registration of a Trademark in Kenya requires:
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
Eligibility of a trademark applications
When filing for a trademark, one should:
identify the mark’s owner
provide a representation of the mark
list the goods and services to which it will apply
indicate the classes including goods and services
give a brief description of the mark
list the countries
Examination of application by the administrative authority
national and international screening
examination of basic and formal requirements by the Patent Office
Classification of goods and services
Trademarks are registered in different classes, depending on the goods and services to be sold or associated with them. The list of classes gives explanatory notes where necessary, as well as a list of goods and services with an indication of the class into which each falls. The class should be chosen carefully as the registration confers a monopoly right on the owner to use the mark in the classes in which it is registered.
Who can register a Trademark?
Any individual, company, partnership or society can register a Trademark or have it used by third parties as long as they meet the necessary requirement. That person can be either a natural person or a legal entity. A legal entity is a business name or a company.
Why register your Trade Mark?
Registration of your Trade Mark gives you the exclusive right to that mark, it is evidence that the mark is yours and it prevents unauthorized use of the trademark. It helps to distinguish your products from that of other competitors.Examples of Trademarks include ‘Jogoo’ is owned by ‘Unga Limited’. These marks have been registered by the respective companies and as such, they have exclusive rights to those marks.
The process of registration also involves extensive searches to ensure that your mark does not resemble any existing Trademarks and as such helps you avoid being sued for infringing on other peoples Trademark. Having a registered trademark may prove useful in the event of infringement proceedings in court; the owner of a registered trademark may also claim damages.