Guide to Registering a Trademark in Kenya

What are trademarks?

Trademarks are marks, symbols, images, slogans, or a combination thereof that are used to identify the source of goods or services.1 Examples of famous trademarks include the swoosh by Nike, the three stripes of Adidas, and Apple’s iconic incomplete apple logo.

Trademarks are important because they distinguish traders who do business within the same class of goods or services.2 They assist consumers with identifying and associating marks with a certain standard of quality. 

According to the Kenya Industrial Property Institute (KIPI), there were 93,310 trademark applications between 2001 and 2022, with a total of 106,998 trademarks registered during the same period.3

This article aims to provide summarised steps for registering a new trademark.4

Step 1: Preliminary Search

Before applying for a trademark registration, conducting a preliminary search is crucial to compare your desired trademark with existing ones. This step is essential to enhance your application's chances of success and avoid unnecessary costs. During this stage, one is assessing the distinctiveness of the proposed mark. If a mark is likely to cause confusion to the consumer, then that mark will be rejected. 

To determine a mark's distinctiveness, an applicant can file FORM TM 275 with the Registrar of Trademarks as per the Trademarks Rules.6

Step 2: Filling the Application

After confirming your trademark does not conflict with existing ones, complete the 'TM 2' form found in the Trademark Rules.7 Submit this form to the registrar along with seven representations of your trademark.

Foreign Applicants

Foreign applicants must file all applications through an agent. The appropriate form is ‘Form TM 1’ that details the name, address and contacts of the foreign appointor; the details and contacts of the appointed agent and the matter that the agent is acting for indicating the trademark number. The form is only valid upon payment of stamp duty.8 Furthermore, the application should be accompanied with Form TM 32.

Fees

The application fees differ for local and foreign applicants. Local applicants are charged Kenyan Shillings (KSHS) 4,000 for the first class and KSHS 3,000 for each additional class. Foreign applicants are charged USD 200 for the first class and USD 150 for each subsequent class.9

Step 3 (Final Step): Trademark Registration

Only the owner of a proposed trademark is eligible to apply for registration.10 If the registrar refuses registration, they must provide written reasons for the refusal. The proprietor may be requested to amend their mark to make it more distinct to be registered. There is a 60-day grace period during which the proposed mark will be advertised as applied, and any opposition to the registration may be accepted by the Registrar11. If there are no oppositions to the registration after the lapse of the period, the mark is registered.

After the registrar successfully examines a trademark to confirm its distinctiveness, a registration certificate will be issued.12 This certificate protects a registered trademark for a period of ten years, with the option to renew.

Post registration.

Renewal and Costs
Renewing your trademark involves costs that differ based on whether you are a local or foreign applicant:

• For local applicants, the renewal fee is KSHS 4,000 for the first class and KSHS 3,000 for each subsequent class.13
• Foreign applicants are charged USD 200 for the first class and USD 100 for each subsequent class.14

Amendments and Fees

Should you wish to make amendments to your trademark, associated fees apply. These fees also differ for locals and foreigners:

• Local Applicants: KSHS 6,000 for the first class and KSHS 5,000 for subsequent classes.15
• Foreign Applicants: USD 300 for the first class and USD 200 for each subsequent class.16

In conclusion, registering and managing trademarks involves several steps, from conducting an initial search to application, renewal, and potential amendments. It is important to know the associated costs, which vary depending on whether you are a local or foreign applicant. Protecting your trademark is not only a legal requirement but also a crucial step in safeguarding your brand identity and assets.

1 <What are the characteristics of Trademark? (legalwiz.in)> accessed on 7 March 2024.

 2 Peguera M, ‘Trademark Functions and Trademark Rights’, 2014, <delivery.php (ssrn.com)> accessed on 11 March 2024.

3 < Kenya_IP_statistics_2000-2022.pdf (kipi.go.ke)> accessed on 22 February 2024.

4 The rules and regulations governing the registration of a trademark are outlined in the Trademarks Act and the Trademarks Rules.

5 <Trademark Forms (kipi.go.ke)> accessed on 7 March 2024.

6 Fourth Schedule, The Trademarks Rules.

7 The Trademarks Rules, Third Schedule.

8 <Trademark Forms (kipi.go.ke)> accessed on 7 March 2024.

9 The Trademarks Rules, First Schedule.

10 Section 20, The Trademarks Act, (Act No.51 of 1955).

11 Section 21, The Trademarks Act, (Act No.51 of 1955).

12 Section 22 (2), The Trademarks Act, (Act No.51 of 1955).

13 The Trademarks Rules, First Schedule.

14 The Trademarks Rules, First Schedule.

15 The Trademarks Rules, First Schedule

16 The Trademarks Rules, First Schedule