Trademark is a distinctive sign that differentiates the goods or services produced by one enterprise from those of another.
The sign could be a letter, a word, slogan, device, brand name, signature, number or a combination of a numeral and word.
Examples of trademarks.
‘’Pride of Africa’’ – This is a slogan trademark for Kenya airways.
‘’Jogoo’’ – This is a word trademark for Unga limited.
‘’504’’ – This is a numeral trademark for Peugeot.
Types of trademarks.
- Trademarks – Marks used to identify certain goods.
- Service marks – Marks used to identify certain services.
- Collective marks – Marks used to identify goods or services produced or provided by members of an association.
In Kenya, trademarks are governed by Trademarks Act 506
Functions of Trademarks
- Enables the consumers to identify a product or service
- Distinguishes products or services from other similar products.
- Gives the company exclusive rights to prevent others from marketing similar products under the same name or confusingly similar mark.
- Trademark is critical in advertising and developing marketing strategies.
- Defines the image, good will and reputation of the product.
- It helps in developing clientele emotional attachment to a product or service. (Some customers are attached to certain trademarks).
- Trademark is a valuable business asset for a company.
- It provides incentive to companies to invest in maintaining or improving the quality of their products.
- It is useful in the event of an infringement proceeding in court. The owner may claim damages.
- Trademarks with good reputation among the consumers may be used to obtain funding as collateral from financial institutions that are aware of the importance of brands for a business success.
Trademarks play a vital role in business and they should be protected by registering them through the Kenya Industrial Property Institute (KIPI). Any person intending to use a trademark can register one whether individual or a business.
Essentials for a trademark to be registered
- Name of the individual, company or firm represented in a special form.
- Signature of the applicant or predecessor.
- An invented word or words.
- Words that have no direct reference to the character or quality of the goods.
- Any other distinctive mark.
Grounds for Trademark rejection
- If you use generic terms – when you use the actual name of the product e.g., mattress and you are selling mattress.
- If you use descriptive terms – these are words used in trade to describe the product e.g., ‘sweet’’ to describe juice.
- If the trademark is in conflict with prior trademark rights. Having two identical trademarks e.g., PEPTANG –KEPTANG. This would be confusing to the consumers who already identify with the Pep tang products.
- If the mark is in its ordinary signification, a geographical name or a surname. Proof of secondary meaning may be required before registration.
How to create a trademark
- It should meet all trademark legal requirements.
- It should be easy to write, read, spell and remember (You can use coined or fanciful words, arbitrary marks i.e., words that have a meaning not similar to the product, use suggestive marks i.e., words that hint to one or some of the attributes of the product).
- It should not have undesired connotations.
- Corresponding name should be available for registration.
- Do a trademark search to ensure there’s no company or individual that has registered the trademark already. There are two types of searches: Personal and official search.
- Official search is carried by the by the institute upon the request of the applicant through an agent.
- Personal search is conducted directly by the applicant upon payment of prescribed fees.
- Fill the TM2 form (trademark form). This form includes:
- – Contact details
- – Illustration of the mark
- -Description of the goods/services
- -Classes that you shall obtain
- -Pay the required fees
- After all the above steps have been achieved, there will be a:
- Formality examination
This is an examination to make sure the trademark selected complies with formality requirements.
- Substantive Examination
This examination makes sure that the trademark complies with all substantive requirements like if it’s in conflict or belongs to a category which is excluded from registration.
- Publication
If there are no grounds for refusal, the trademark will be published in the industrial property journal or the Kenya gazette allowing for a period of 60 days for any person to give notice of opposition.
- Registration
If the application is accepted or receives no opposition within the allocated 60 days for opposition, the application will be accepted in favour of the applicant and the initial registration will be valid for 10 years.
- Renewed
After 10 years if the, the trademark custodian will be required to pay a renewal fees and if they don’t, the trademark may be removed for nonpayment.
- Non-use of the mark
If the trademark is not used in 5 years, any person may apply for its removal.