By Victor Orandi
For most business, protecting a trading name or brand logo is essential in equating a monopoly right to trademark use in their chosen class of goods or services. This generates goodwill and brand recognition. By registering a business name and/or logo, the proprietor can put third parties on notice that they own a registered mark.
Infringement of the proprietor rights of the mark may attract legal action against the third-party competitor attempting to register a confusingly similar trademark. This ensures trademark asset protection.
A business intending to protect its trademark must search for the trademark against the Kenya Industrial Property Institute (KIPI) register to ensure that the mark applied for is not too similar to an existing registered or unregistered trademark.
Unregistered rights in trademarks have statutory protection against passing off the owner’s trade name or brand logo. Passing off is a common law tort that may be used to enforce unregistered trademark rights and protect the goodwill of a business from misrepresentation. In dealing with a case of passing off, the business proprietor should establish whether the infringing mark has sufficient similarity with the overall appearance compared to the business’s mark, covering the same commodity, similar words or look, that would cause confusion to an ordinary customer.
Opposition
Specific statutory grounds could prevent a trademark from being registered successfully; when an application for registering a trademark has been accepted, whether absolutely or subject to conditions or limitations, the mark shall be advertised in the KIPI Journal.
Any person may, within 60 days from the date of the advertisement in the Journal of an application for registration of a trademark, give notice to the KIPI Registrar of opposition to the registration. An opposition may be founded on various grounds, including;
- A mark resembles a trademark filed or registered by another person designating the identical kind of goods or services;
- A mark resembles a well-known trademark as a result of representation, publication and advertising in public.
- A mark is identical or similar to an expired mark whose renewal is duly pending;
- The tort of passing-off, etc.
- Notice of opposition
The notice of opposition shall include a statement of the grounds upon which the opponent objects to the registration. The applicant shall have the right to respond to such opposition within 42 days from receipt of the notice of opposition through filing a counter-statement with the Registrar, setting out the facts against the notice of opposition.
- Opposition proceedings
Upon an application for the opposition, the registration process is halted, and opposition proceedings are commenced. Evidence is submitted by way of a statutory declaration, which may include using the necessary exhibits.
The Registrar shall conduct a hearing within 14 days upon notifying the parties accordingly. Parties shall present their arguments during the hearing for consideration and determination of the matter by the Registrar.
- Registrar decision
The Registrar may decide to award costs and permit registration of the mark upon completion of the opposition proceedings.
Appeal against Registrar’s decision
The Registrar’s decision may be appealed against in the High Court within 60 days of the decision. The Court shall make an order determining if registration is to be permitted or not. This registration may be subject to certain modifications. The Registrar shall, if necessary, thereupon rectify or alter the trademark register.
Opposition procedure prevents the registration of infringing marks, thus protects the intellectual property rights and benefits of the rightful owner.