Navigating the June 2020 Special Notice from the Registrar of Trade Marks, Kenya.
- Caroline Wanjiru Muchiri |
- June 18, 2020 |
- Intellectual Property,
- Trademark
The Kenya Industrial Property Institute (KIPI) has issued a Special Notice under section 23 of the Trademarks Act as read together with Rules 65, 67 and 68 of the Trade Marks Rules. Combined, these provisions allow the Registrar of Trade Marks to remove a trademark from the register for non-renewal. The impact is that the registered proprietor loses the exclusive proprietary rights to the trademark unless they apply for restoration of the mark. Although the removal does not fully extinguish the associated rights, it creates an avenue for 3rd parties to lawfully accrue rights to the removed trademarks. The use or exploitation of such 3rd party rights effectively diminishes the rights of a registered proprietor to claim exclusivity to the use of the trademark previously http://www.kipi.go.ke/images/docs/journals/June_special_Journal.pdf registered. Registration affords the owner the exclusive right to use the trademark in relation to the goods and services. This power includes the power to prevent and control all forms of use and the right to sue for infringement against marks that are identical or resemble the registered mark. These are lost upon removal from the register.
It is important to note that the removal from the register does not terminate any previously acquired rights associated with the trademark. Therefore any goodwill previously accumulated is not extinguished. However, 3rd parties are free to use the marks and accumulate their own goodwill. Noting the intangible nature of the goodwill asset, it is difficult to separate to a mark based on time. It is therefore in the best interest of the proprietors listed in the Special Notice, if they are still interested in the use and control of the rights related to the trademark to apply for their restoration.
Back to the Special Notice, it includes trademarks which expired prior to 2000. What’s with the Year? In 2000[1], Kenya adopted the classification of goods and services under the Nice Classification despite not being a signatory to the Nice Agreement. This prompted the call for reclassification of all trademarks registered under the previous system applicable before the year 2000. The reclassification involved the migration to the new system and included the allocation of new trademark numbers with retention of effective date of registration. In some instances, the reclassification was done when the proprietor applied for renewal. This ensured the proprietors did not lose any rights they had previous to the reclassification. However, not all proprietors applied for reclassification and some of these trademarks may still be on the register.
For the marks listed in the Special notice, it is possible that some were migrated to the new system, allocated new numbers and rendering the old ones redundant but they remained on the register. Before taking advantage of the removed marks or their semblance, third parties should confirm the existence of such rights with the Registrar of Trademarks.
Otherwise, the rights in the listed trademarks stands extinct unless restored on the register.
[1] Kenya adopted the classification in 2000 but it’s not until 2003 when Legal Notice 146 of 2003 was issued domesticating incorporating this in the legislation.