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How trade marks registry can unlock brand value

By William Maema

Tucked deep in the middle of the high-end leafy suburb of Lavington along Kabarsiran Avenue is a little-known government office called the Trade Marks Registry. It is so discreet that even the signboard of Kenya Industrial Property Institute (KIPI) where it is housed does not mention it. It is a case of if you know you know. 

The choice of location, whether by design or default, suggests that this registry was probably not set up for the hoi polloi who perforce use public transport to access government offices. It entrenches the misplaced notion that intellectual property, the registry’s raison d’etre, is the esoteric domain of the intelligentsia.

Despite its relatively low profile, the Trade Marks Registry is one of the most important enablers of business in Kenya. It is the sole issuer, regulator and protector of trade marks also known as brands in common parlance.   

Unlike copyright which requires no registration to be enforced, a trade mark right is acquired through registration at the Trade Marks Registry. Since Kenya is a first to file country, whoever first applies to register a trade mark is deemed to be its lawful owner to the exclusion of everyone else. Similarly, unlike copyright, there is no requirement that a trade mark must be the original creative work of the applicant.

The registered proprietor enjoys exclusive rights to use the mark in Kenya. That is why it is so important for businesses to register their brands lest they popularize them at a huge marketing expense only to find that they cannot use them due to the existence of a prior registration by another party. Trade mark squatters have been known to register foreign brands and domain names in Kenya and sell them to their rightful owners at extortionist prices when they are desperate to enter the Kenyan market.

A trade mark adds substantial commercial value to a product. That explains why even a homogeneous product like salt or sugar is packaged and sold under different brands yet the taste is largely similar.

A trade mark creates an association between the product and the manufacturer and acquires goodwill which over time increases sales when consumers come to attribute a certain quality or character to the goods produced by one manufacturer compared to those of a competitor.

In a sense, therefore, a trade mark gives the product an identity which creates a relationship between the product and the consumer. No such relationship develops in respect of unbranded goods. 

As the grantor of trade mark rights, the Trade Marks Registry is, therefore, a very important cog in the wheel of commerce. 

To be fair, the Trade Marks Registry is one of the few registries in Kenya which have performed reasonably well compared to other government registries. The staff are helpful and approachable despite their heavy workload. The process flow is well defined and there is predictability and consistency in decision-making.

However, like all other government registries, this registry suffers from systemic challenges which, if addressed, could contribute significantly to improving the business climate in Kenya and raise the country’s ranking in the Ease of Doing Business Index.

The first issue to sort out is to fully roll out the online filing system which was introduced   in 2020 to deal with the challenges posed by the COVID-19 pandemic but remains largely non-operational to date.

Such a system would enable trade mark owners and their agents to file applications and pay the official fees online without having to visit the registry which is completely unnecessary in the digital era that we are living in. The fact that applications are still filed manually and payments made by cheque should cause no mean embarrassment to all concerned.

Automating the registry operations would deal a fatal blow to the shameful phenomenon of missing files and the attendant malady of greasing the palms of officials to look for them.

The registry should enable users to conduct trade mark searches online upon payment of the requisite government fees instead of physically delivering letters to the registry, paying by cheque and waiting for up to ten days to get results which are otherwise readily available in the registry’s data base. With the right configuration, the system should be able to generate instant search reports as the Business Registration Service (BRS) Portal does.

Inexplicably, the ban on personal searches which was imposed due to COVID-19 is still in force despite the pandemic prevention measures having been relaxed in all other offices.

Personal searches are faster and significantly cheaper than official searches. While the former takes 24-48 hours to be completed, the latter takes 7-10 days. This makes the perpetuation of the ban look sinister as it is not only unnecessary but adds to the cost of doing business.

Shortage of manpower is a major constraint of service delivery at the registry. With only three state counsel responsible for hearing and determining all trade mark disputes such as oppositions and expungements in addition to responding to complex legal queries from law firms, the backlog of pending rulings is at an all-time high, in some cases going as far back as 2018 and earlier.

The same situation is replicated at the front desk which has only seven trade mark examiners including the supervisor who mainly handles administrative duties leaving only six doing the actual technical work of examining the registrability of proposed marks and issuing examination reports to applicants.  

This small team handles hundreds of applications every day which, naturally, slows down the process of examining new applications and processing them for advertisement and registration.

The physical interaction between trade mark examiners and practitioners was curtailed during the pandemic but for some unknown reason, it is yet to be restored. This has resulted in a heavy backlog of matters awaiting fairly simple official actions or decisions which could easily be provided through a face to face interaction between the official and the applicant’s agent.

Cost will no doubt be cited as the biggest hurdle to improving services at the registry. However, as a financially autonomous parastatal, KIPI generates substantial revenue from the official fees paid by trade mark applicants especially foreign brand-owners who constitute the bulk of its client base.

Foreign applicants normally gawk at the high official fees charged by the Kenyan registry compared to what other registries across the world charge for similar services.

KIPI should prudently manage such revenue and apply it towards improving its technical capability, systems and manpower to efficiently handle the large volume of brands that come to Kenya by virtue of the country’s status as the gateway into the greater Eastern African region, a market of 476.5 million people.

As an institute, KIPI can also generate income by designing and offering both regular and bespoke training programmes to aspiring IP paralegals. It can also attract funding by establishing research and post graduate programmes either alone or in collaboration with local and foreign universities.  

The quick fixes suggested above would go a long way in enabling the Trade Mark Registry to live up to its mission of protecting and promoting industrial property rights and fostering innovation for sustainable development in Kenya and thereby become a world class institution in the administration of industrial property rights as proclaimed in its mission and vision statements.

The article was featured in the Business Daily on 20 February 2023 and can be accessed here