Registering a Trademark in Kenya: A Step by Step Guide
- Muhoro & Gitonga Associates
- Jan 26, 2024
- 5 min read
Updated: Oct 21
Table of Contents
Introduction to Trademark Registration in Kenya
Legal Framework for Trademarks in Kenya
3.2 Kenya Industrial Property Institute (KIPI)
3.3 International Treaties and the Madrid Protocol
Why You Should Register a Trademark in Kenya
Step by Step Process of Registering a Trademark in Kenya
5.1 Step 1: Conduct a Trademark Search
5.2 Step 2: Prepare Your Trademark Application
5.3 Step 3: Submit the Application to KIPI
5.4 Step 4: Examination of the Application
5.5 Step 5: Publication in the Kenya Industrial Property Journal
5.6 Step 6: Opposition Period (60 Days)
5.7 Step 7: Registration and Certificate Issuance
5.8 Step 8: Renewal of Trademark (Every 10 Years)
Key Considerations in Trademark Registration
Landmark Trademark Cases in Kenya
Common Challenges in Trademark Registration
FAQs on Trademark Registration in Kenya
1. Introduction to Trademark Registration in Kenya
In Kenya’s competitive business environment, protecting your brand is just as important as running your operations. One of the most effective ways to do this is by registering a trademark. A trademark not only safeguards your identity but also prevents competitors from imitating your brand.
This guide explains the step by step process of trademark registration in Kenya, including the legal framework, key considerations, and landmark cases that shape trademark law in Kenya.
2. What Is a Trademark?
A trademark is a distinctive sign, word, phrase, symbol, or logo that identifies the goods or services of one enterprise and distinguishes them from those of others.
In Kenya, trademarks may include:
Logos and brand names
Slogans and phrases
Shapes, colors, and packaging
Non-traditional marks (sounds and smells, subject to approval)
3. Legal Framework for Trademarks in Kenya
3.1 The Trade Marks Act
The Trade Marks Act (Cap 506) governs registration, rights, and enforcement of trademarks. It defines what qualifies for registration, sets out the procedure, and gives registered owners exclusive rights to their marks.
KIPI is the statutory body responsible for:
Receiving and examining applications
Publishing trademarks in the Kenya Industrial Property Journal
Handling oppositions
Issuing registration certificates and managing renewals
3.3 International Treaties and the Madrid Protocol
Kenya is a member of:
Paris Convention – ensuring protection across member states.
Madrid Protocol – allows Kenyan businesses to seek international trademark protection through a single filing.
4. Why You Should Register a Trademark in Kenya
Legal Protection: Exclusive rights to your brand name or logo.
Market Advantage: Prevents competitors from using confusingly similar marks.
Consumer Trust: Builds recognition and loyalty.
Asset Value: Trademarks can be licensed, sold, or franchised.
Global Reach: Through the Madrid Protocol, you can protect your brand internationally.
5. Step by Step Process of Registering a Trademark in Kenya
5.1 Step 1: Conduct a Trademark Search
Check the KIPI database to ensure your proposed mark is not already registered. This avoids costly disputes and delays.
5.2 Step 2: Prepare Your Trademark Application
Your application should include:
Applicant’s name and address
A clear representation of the mark
Classes of goods/services (based on the Nice Classification system)
Completed TM2 Form (application form)
5.3 Step 3: Submit the Application to KIPI
5.4 Step 4: Examination of the Application
KIPI examines the application for compliance with the Act and possible conflicts with existing marks.
5.5 Step 5: Publication in the Kenya Industrial Property Journal
If approved, the mark is published to allow public opposition.
5.6 Step 6: Opposition Period (60 Days)
Any third party may file an opposition within 60 days. If no opposition is filed (or resolved in your favor), the process proceeds.
5.7 Step 7: Registration and Certificate Issuance
Once approved, KIPI issues a Certificate of Registration, granting exclusive rights.
5.8 Step 8: Renewal of Trademark (Every 10 Years)
Trademarks are valid for 10 years and may be renewed indefinitely in 10-year increments.
6. Key Considerations in Trademark Registration
Distinctiveness: Marks must be unique, not descriptive or generic.
Correct Classification: Goods/services must be accurately classified.
International Protection: Use the Madrid Protocol for expansion abroad.
Enforcement: Owners must actively monitor and enforce their rights.
Legal Assistance: Trademark lawyers can streamline the process and handle oppositions.
7. Landmark Trademark Cases in Kenya
Kenyan courts have developed an important body of IP jurisprudence. Below are three cases:
Sony Holdings Ltd v Registrar of Trade Marks & another [2015] KECA 904 (KLR)
Issue: Whether “Sony” could be registered as a trademark in Kenya despite global recognition.
Holding: The court emphasized distinctiveness and global reputation, affirming strong trademark protection.
Significance: Reinforced that well-known marks enjoy enhanced protection even against unrelated goods.
Puma Se v John Githenduka Macharia Mburu [2021] KEHC 6861 (KLR)
Issue: Whether goods seized bearing the PUMA trademark were counterfeit and infringed on Puma’s registered mark.
Holding: The Court found clear evidence of counterfeit products, upheld trademark infringement, and granted injunctive relief to Puma.
Significance: Demonstrated robust enforcement of trademarks in Kenya and underscored the courts’ role in combating counterfeiting under the Anti-Counterfeit Act.
Catherine Masitsa & another v Samantha Ireri [2019] KEHC 9586 (KLR)
Issue: Whether the Defendant’s use of “Samantha” on social media for beauty services infringed the plaintiffs’ registered “SAMANTHA” trademark.
Holding: The Court dismissed the claim, finding insufficient resemblance or confusion and noting that “Samantha” was the Defendant’s personal name.
Significance: Set limits on trademark enforcement by showing that not every similar use constitutes infringement; consumer confusion remains the key test.
8. Common Challenges in Trademark Registration
Delays in examination and opposition hearings
Objections due to similarity with existing marks
Failure to classify goods/services correctly
Opposition from prior users or competitors
9. FAQs on Registering a trademark in Kenya
Q1: How long does it take to register a trademark in Kenya?
8–12 months depending on objections or oppositions.
Q2: How much does it cost to register a trademark in Kenya?
Costs vary depending on the number of classes. Government fees range from KES 4,000–20,000, excluding legal fees.
Q3: Can a foreign company register a trademark in Kenya?
Yes. Foreign entities may register directly or through a local agent.
Q4: What happens if someone infringes my trademark?
You may seek an injunction, damages, or seizure of counterfeit goods under the Trade Marks Act and Anti-Counterfeit Act.
Q5: Do I need to register my trademark internationally?
Not mandatory, but advisable if expanding abroad. Use the Madrid Protocol for cost-effective international protection.
10. Conclusion
Registering a trademark in Kenya is essential for brand protection and long-term business success. With clear laws under the Trade Marks Act, an efficient regulator in KIPI, and Kenya’s participation in global treaties, trademark owners enjoy strong protection.
To maximize protection and avoid costly disputes, always conduct a proper search, classify correctly, and seek professional legal advice.
Ready to protect your brand? Contact our legal team today for expert support with trademark registration in Kenya.
To learn more, see the Trade Marks Act.
