Requirements for Registration of Trade marks

Distinctiveness
In order for a trade mark (other than a certification trade mark) to be registrable , it must contain or consist of at least one of the following essential particulars-

  1. the name of a company, individual or firm, represented in a special or particular manner;
  2. the signature of the applicant or some predecessor in his business;
  3. an invented word or invented words;
  4. 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;
  5. any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in paragraphs (1), (2), (3) and (4) above , cannot be considered registrable except upon evidence of its distinctiveness.

"distinctive" means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration and in relation to services means to distinguish services with the provision of which the proprietor is or may be connected in the course of business, from services the provision of which he is not so connected. In determining whether a trade mark is adapted to distinguish, Registrar considers the extent to which

  1. the trade mark is inherently adapted to distinguish; and
  2. by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish.

Prohibition of registration of deceptive marks, matter
A trade mark cannot be registered if it is likely to deceive or cause confusion or otherwise, or if it would be contrary to law or morality, or any scandalous design.

Prohibition of registration of identical and resembling trade marks
A trade mark cannot be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a description of services.

In case of honest concurrent use, or of other special circumstances which in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Registrar may think it right to impose.

Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other, in respect of the same goods or description of goods or in respect of the same services or description of services, the Registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or on an appeal by the court, as the case may be.

Protection of well-known trade marks
A trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well known trade mark, is a mark which is well known in Kenya as being the mark of a person who-

  1. is a national of a convention country; or
  2. is 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.

The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well known trade mark, is entitled to restrain by injunction, the use in Kenya of a trade mark which is identical or the essential part of which is identical or similar to his, in relation to identical or similar goods or services, where the use is likely to cause confusion among the users of the goods or services.

A trade mark cannot be registered if that trade mark, or an essential part thereof, is likely to impair, interfere with or take unfair advantage of the distinctive character of the well-known trade mark.

Registration of a trade mark subject to disclaimer
If a trade mark contains any part not separately registered by the proprietor as a trade mark; or contains matter common to the trade or to the provision of services of that description or otherwise of a non-distinctive character, the Registrar , may require, as a condition of its being on the register- the proprietor to disclaim any right to the exclusive use of any part of the trade mark or to the exclusive use of all or any portion of any such matter, or that the proprietor to make such other disclaimer as the registrar may consider necessary. A word which is a commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, cannot be registered as a trade mark in respect of a chemical substance or preparation.

limitation as to colour, and of absence thereof
A trade mark may be limited in whole or in part to one or more specified colours, If a trade mark is registered without limitation of colour, it is deemed to be registered for all colours.


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