What is a Trademark?
Section 2 of the Trade Marks Act Cap 506 defines it as, “a mark used or proposed to be used in relation to goods or services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those goods or services.”
The European Union Intellectual Property Office identifies the following types of Trade Marks:
Word mark; consists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed.
Figurative mark; a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements.
Figurative mark containing word elements; a figurative mark consisting of a combination of verbal and figurative elements.
Shape mark; consists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance.
Position mark; consists of the specific way in which the mark is placed or affixed to the product.
Pattern mark; consists exclusively of a set of elements which are repeated regularly.
Colour mark; a trade mark which consists of a single or a combination of colour (without contours).
Sound mark; consists exclusively of a sound or a combination of sounds.
Motion mark; consists of, or extends to a movement or a change in the position of the elements of a mark.
Multimedia mark; consists, or extends to, the combination of images and sound.
Hologram mark; this is a new category of the trade mark (as and from 1 October 2017). Hologram marks consist of elements with holographic characteristics.
Which laws apply to the international registration of trademarks?
Trade Marks Act Cap 506, Laws of Kenya
Section 40B recognizes the Banjul Protocol and the Madrid Agreement in relation to the regional and international registration of trademarks.
Particularly, section 40D stipulates that a mark registered by the African Regional Intellectual Property Organization (ARIPO) under the Banjul Protocol, shall be protected in Kenya as a member state.
Where a conflict between the Banjul Protocol and the Trade Mark Act arises, the Act shall prevail.
Banjul Protocol on Marks
ARIPO is hereby entrusted with the registration of marks and the administration of such registered marks on behalf of the Contracting States of the Banjul Protocol.
Section 2 of the Banjul Protocol states, “All applications for the registration of a mark shall be filed either directly with ARIPO or with the Industrial Property Office of a Contracting State by the applicant or his duly authorized representative.”
If an applicant files the application with the national intellectual property authority, the authority shall be required to transmit the application to ARIPO, within one month.
An application for the registration of a mark shall identify the applicant and designate the Contracting States in which registration is being requested.
Madrid Protocol
The Madrid Agreement is an international treaty that allows the application for trademark registration in any of the countries that have joined the Madrid Protocol. This is done by filling in one international application form and paying one set of fees.
It is administered by the World Intellectual Property Organization (WIPO). The applicant’s trademark can then be protected in up to 122 countries.
A mark may be the subject of an international application only if it has already been registered with the trademark office of the country of origin.
An application for international registration must designate one or more Contracting Parties in which protection is sought. The office of each designated Contracting Party shall issue a statement of grant of protection.
However, when designated Contracting Parties examine the international registration for compliance with their domestic legislation, and if some substantive provisions are not complied with, they have the right to refuse protection in their territory.
Parties can only apply for trademark registration in countries that have the same treaty membership.
What are the steps for international registration of trademarks?
File an application in compliance with your national intellectual property laws.
Once registered, the applicant may seek out legal representatives from the countries to which they seek protection. The applicant shall thereafter file the application for registration, in compliance with the national laws of the countries.
Alternatively, the applicant, through the national intellectual property authority, seeks registration of trademarks by ARIPO or WIPO. The applicant will designate the countries to which protection is sought.
Conclusion
Intellectual property is territorial in nature. Therefore, each application is subject to the national legislation of the country. To ease registration formalities, WIPO and ARIPO may conduct examinations in designated countries and establish whether the protection of trademarks is viable.
Regardless of how you apply for your trademark on an international scale, every individual country is going to review your application and approve it or refuse it based on their local register. The one exception to this rule is a “European Trademark” that covers trademark registration in all EU countries.
Mitch Ojwang
An advocate of the High Court of Kenya
Intellectual Property Law Consultant at Sheria Online
