LESINKO
NJOROGE & GATHOGO
ADVOCATES
LNG INSIGHTS
2020, No 7
KEEP YOUR BRAND PROTECTED UNDER LAW
Dr Tom Kabau
Partner I tomkabau@lesinkonjoroge.com Senior Lecturer, School of Law, JKUAT
‘A notable and vital exemption to the proscription of speculative registration, even without the utilisation of the trade mark, is in the context of the defensive registration of well-known brands. In that sense, it is noteworthy that Kenya is one ofthe African states that permit the registration of defensive trade marks in relation to well-known brands’
Business brands are usually protected through the use of distinctive names and symbols, which may be registered as trade marks. The registration of a brand name or symbol at the Kenya Industrial Property Institute (KIPI) under the Trade Marks Act potentially provides indefinite and perpetual intellectual property rights on the commercial use and exploitation of the brand. Nonetheless, despite the registration of a trade mark at KIPI having the potential to legally protect the brand indefinitely, it is noteworthy that such protection may still lapse in three core ways.
REGISTRATION RENEWALS First, for the indeterminate protection of a registered trade mark to be sustained, the law requires that the registration be renewed every ten years. Failure to renew the registration at KIPI will result in the protection of your brand under the Trade Marks Act lapsing. However, despite the lapse in protection under the Act, the brand may still be protected under the common law, such as under the tort of passing off, and misrepresentation, provided the name or symbol has not become generic by losing its distinctive character.
DEFENSIVE REGISTRATION
Second, the Kenyan law provides that a brand name or symbol may be deregistered by KIPI if more than five years have elapsed without its utilisation in respect of the goods or services for which it was registered. The deregistration is premised on the notion that there should be utility and use of the registered brand name or symbol, and that registration should not be for mere speculative purposes.
A notable and vital exemption to the proscription of speculative registration, even without the utilisation of the trade mark, is in the context of the defensive registration of well-known brands. In that sense, it is noteworthy that Kenya is one of the African states that permit the registration of defensive trade marks in relation to well-known brands. It is likely that a local entrepreneur may seek to register or utilise a brand name or symbol of an internationally acclaimed product so as to reap from its good will. The local entrepreneur may easily reap commercial benefits if the market assumes that his product originates from or is related to the internationally acclaimed brand.
In cases where a brand achieves immense market success thus becoming a well-known mark internationally and locally, it is highly advisable that it be registered in other states as a defensive trade mark even if it is not in use in relation to particular goods or services in such states.
In the case of Kenya, the registration of a defensive trade mark in the country prevents