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Country Name: KENYA

KENYA

Types of trade marks

The Act provides for the registration of the following marks:

  • trade mark for goods
  • trade mark for services
  • collective trade marks
  • certification trade marks
  • defensive registrations
  • parts of marks
  • series of marks.

Classification

The International Classification of Goods and Services (Nice Classification) is followed. Provision is made for multiple class filings.

Application

Applications are filed with the Kenya Intellectual Property Institute (KIPI).

The following information and documents are required:

  • full particulars of the applicant
  • power of attorney (simply signed)
  • list of goods and/or services to be covered
  • prints of the mark
  • priority document (if applicable; certified copy).

Examination/procedure

Applications are examined as to formal requirements as well as on relative and
substantive grounds. If accepted, the mark must be published.

Opposition

Interested third parties may oppose the application within 60 days from date of
publication. The extension of the opposition period is possible at the discretion of the
Registrar for a maximum of 90 days.

Duration and renewal

A trade mark registration is valid for an initial period of 10 years from the date of filing,
and is renewable for like periods of 10 years, upon payment of the applicable renewal
fees.
Assignment

Assignments are possible and may be made with or without the goodwill of the business. Recording of an assignment is necessary to be effective against third parties.

Requirements for recordal:

  • power of attorney by the assignee (simply signed)
  • date of transfer of ownership
  • full particulars and legal status of the assignee
  • deed of assignment (simply signed by both parties)

PATENTS

Types of applications

Application for a patent may be made by way of:

  • a non-convention application, where the effective date is the filing date of the application
  • a convention application, where the effective date would be the priority date of the first-filed application under the Paris Convention
  • a national phase application based on an international application under the PCT in which Kenya is designated
  • an ARIPO application designating Kenya
  • a divisional application, where the original application covered more than one invention
  • a utility model application.

Application

Non-convention, convention and PCT national phase applications can be filed with the Kenyan Industrial Property Institute (KIPI).

Applications in terms of the Harare Protocol (ie ARIPO applications) can either be filed via KIPI, in which case they must be transmitted to the ARIPO office for processing. Alternatively, they can be filed at the ARIPO office in Harare.

Filing requirements:

  • full particulars of the applicant
  • power of attorney (simply signed)
  • assignment from the inventor, or a statement justifying applicant’s right to patent
  • specification (including claims, drawings and abstract), in English
  • certified copy of the priority document and an English translation thereof (if applicable; not required for PCT national phase applications).

Examination procedure

Applications are subjected to formal examination. Thereafter KIPI will call for the filing of a request for substantive examination and payment of the prescribed fees. The request for substantive examination must be filed within three years. Once substantive examination is carried out, the Director notifies the applicant of any objections and invites him to submit his observations and, where applicable, to amend his application. A response to the substantive examination report must be filed within 60 days. This is extendible by a period of 90 days.

Duration and maintenance

Patents are valid for a period of 20 years subject to payment of annual maintenance fees. A six month grace period is available subject to payment of fines for late renewal.

Failure to pay the annual maintenance fees before the deadline or within the six month grace period leads to lapsing of the application/patent.

Assignments and voluntary licences

Assignments and licences

The Act provides for assignments of patents or patent applications, and for voluntary licences. The Act contains extensive provisions regarding voluntary licences, such as the form of a licence contract, prohibited terms in licence contracts, etc. Provision is also made for compulsory licences and licences of right.

Assignments and voluntary licences must be recorded to be effective against third parties.

Requirements for recordal

  • assignment or licence document (simply signed)
  • power of attorney from the assignee, or from the licensor/licensee (simply signed).

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