Kenya

General Information

• Capital: Nairobi
• Population: 28.8 million
• Area: 582 650 km2
• Languages: English, Swahili - official languages
• Exports: Coffee; tea; petroleum products
• Imports: Machinery and transportation equipment; consumer goods; petroleum products
• Currency: Kenya Shilling

Trade Marks

International Conventions

WIPO, WTO, Paris Union, Signatory to the Trade Mark Law Treaty, Madrid Agreement, Madrid Protocol, Nairobi Treaty, Berne Union, Phonograms Convention, Satellites Convention, Signatory to the WIPO Copyright Treaty, Signatory to the WIPO Performances and Phonograms Treaty, member of ARIPO.

Requirements for Application

(a) Power of attorney, simply signed;
(b) Twelve prints of device marks.

Classification

International classification of goods and services. A single application may cover more than one class.

Procedure

Applications are examined as to inherent registrability and conflict with prior existing registrations/applications.

Opposition

Opposition may be lodged within sixty days following the date of advertisement of the trade mark application.

Extension of the opposition period is possible at the discretion of the Registrar. 

Use

Registration may be cancelled if the trade mark was registered without any bona fide intention to use the trade mark and there has, in fact, been no bona fide use of the trade mark up to the date one month before the date of the application for cancellation.

Registration may also be cancelled if there has been no bona fide use of the trade mark for a continuous period of five years and one month up to date of application for cancellation.

Permitted use by a third party cannot be relied on by the proprietor unless the user is recorded as a licensee. 

Duration and Renewal

A trade mark registration is effective for an initial period of ten years and, thereafter, renewable for further periods of ten years.

Licensing/Registered Users

Licensing is recognised. Recordation is required in order to be effective against third parties and for use by the licensee to inure to the benefit of the Registered proprietor.

The license agreement must provide for quality control by the licensor. 

Requirements

(a) License agreement;
(b) Statutory declaration and statement of case;
(c) Power of attorney from the proprietor;
(d) Power of attorney from the licensee.

Assignments

Assignments are possible and may be made with or without the goodwill of the business.

Recordation is required. 

Requirements

(a) Deed of assignment;
(b) Power of attorney from the assignee.

Marking of Goods

Notice of registration by use of the legend ‘Registered Trade Mark’ or suitable abbreviation (eg. ‘Regd. Tm.’) or symbol ® optional.

A range of regulations apply, especially in the case of foods, drugs and chemical substances.

Patents

General

Patent protection is obtainable via a national filing. Kenya is a member of the International Convention, PCT, and WTO and of ARIPO.

Patentable Subject Matter

An invention is patentable if it is new, involves an inventive step, is industrially applicable or is a new use. The following are not patentable:

Discoveries, scientific theories and mathematical methods;
Schemes, rules or methods for doing business, performing mental acts or playing games and computer programs;
Methods for treatment of the human or animal body by surgery or therapy, diagnostic methods, excluding products, for use in any such methods;
Presentation of information;
Public health related methods of use or uses of any molecule or other substance whatsoever used for the prevention or treatment of any disease that the Health Minister may designate as a health hazard or as a life-threatening disease;
Plant varieties, but not parts thereof or products of biotechnological processes; and
Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation. 

Filing Requirements

Neither legalization nor notarisation of any document is required. A specification in English is needed.

Novelty

An invention is new if it has not been made available to the public anywhere in the world by means of written disclosure, or by oral disclosure, use, exhibition or other non-written means, before the date of filing of the application, or the priority date. A grace period of twelve months before the filing or priority date, is provided, if the disclosure was by reason or in consequence of
(a) acts committed by the applicant or his predecessor in title; or
(b) an evident abuse committed by a third party in relation to the applicant or his predecessor in title.

Examination

An application is initially subjected to formal Examination. Thereafter the Kenyan Director may call for a request for substantive examination to be filed. For PCT national phase applications, if it is apparent from the IPER/IPRP that the invention claimed does not fulfil the requirement of Novelty, the Director may not grant a patent unless the applicant either satisfies him that the requirement has been fulfilled or amends the claims in a way that fulfils the requirement. Furthermore, if the IPER/IPRP states the opinion that any defects exist, the Kenyan application may be considered withdrawn unless the applicant satisfies the patent office that the defects do not exist.

Duration/Maintenance

A patent expires at the end of twenty years from the filing date subject to payment of annual maintenance fees as from the day before the first anniversary of the filing date. A grace period of six months is available.

Working

At any time after four years from filing or three years from grant, whichever period last expires, any person may apply to the tribunal for a licence to exploit the patented invention on the grounds that a market for the patented invention is not being supplied on reasonable terms in Kenya.

Licences/Assignments

Licences and Assignments must be recorded.