As a business owner, your trademark is an important asset that sets your brand apart from competitors and helps customers identify and trust your products or services. In Kenya, like in many other countries, trademark rights are granted to the owner of a trademark through registration. However, these rights are not indefinite and can be lost if the trademark is not used or properly maintained.
Under the Trade mark’s Act, Cap 506 of Kenya, owners have five (5) years from the registration date to start using their mark, failing which anyone can initiate a cancellation action against the trademark and possibly register it in their own name.
A mark may become stronger and stronger and acquire higher levels of distinctiveness through extensive and consistent use. It should be noted that extensive and consistent use may also make a mark’s distinctiveness fade and even disappear through a legal phenomenon called “genericization”. If the average consumer starts using your mark not only to refer to your own products or services, but as a general term to indicate any product/service of the same category, then you may be in trouble. Examples of marks that were genericized are: Aspirin – Originally a trademark of Bayer AG, but now commonly used to refer to any brand of acetylsalicylic acid pain relievers; Escalator – Originally a trademark of Otis Elevator Company, but now commonly used to refer to any type of moving staircase or conveyor; Thermos – Originally a trademark of Thermos LLC, but now commonly used to refer to any type of vacuum insulated container used to keep drinks hot or cold among many others.
Here are some tips to avoid fading or disappearance of your mark through “genericization”:
- Use your mark as a mark, and not as a verb, noun, or as an adjective (by way of example, Google® is fighting to prevent the genericization of its mark, by systematically opposing to the utilisation of “to Google” as a verb indicating “to research on the internet”).
- Use your mark consistently, without major variations as compared to the version that you originally filed. This means using the trademark as it is registered, without modifying it or using it in a way that could confuse consumers. For example, if your trademark is registered in upper case letters, you should not use it in lower case letters.
- If you notice your marks being used in any context (tv, newspapers, etc.) as a generic term, you should take steps to inform the party in question that the term is a registered and protected mark and should only be used as such by its legitimate owner or with his/her consent.
- Using the following symbols is highly advisable: ® or TM (or even “Registered Trademark”). It may work as a powerful warning message to potential good or bad faith infringers of your trademark, and it educates your consumers to the fact that your trademark is duly protected (registered or applied for). One word of caution: do NOT use the word “Registered” or the symbol ® if your trademark is simply applied for, but the registration process has not ended yet, use ‘TM’ instead.
Another important aspect of maintaining your trademark rights in Kenya is renewing your trademark registration. Renewing your trademark is important to maintain the legal protection for your brand. A trademark registration in Kenya is generally valid for a period of 10 years, after which it must be renewed to maintain its legal protection. If a trademark registration is not renewed, it can be considered abandoned and can be removed from the official register, making it available for others to use. Additionally, if a trademark registration is not renewed, it may be more difficult to enforce against infringement or counterfeiting activities. Renewing your trademark also helps to ensure that your brand remains in good standing and that it continues to be recognized by consumers. By renewing your trademark, you are showing that your brand is still active and in use, and you are maintaining your rights to use it exclusively.
In addition to using and properly maintaining your trademark, it is also important to monitor its use by others. Monitoring your trademark in Kenya is important for a number of reasons. First, it helps to ensure that your trademark is not being used by others without your permission, which can damage your brand and reputation. Second, it can help to identify potential infringement or counterfeiting activities, which can be costly to address. Third, it can help to protect your trademark registration and prevent it from being challenged or cancelled by others. By regularly monitoring your trademark, you can take timely action to address any issues that may arise, and help to protect your investment in your brand.
In conclusion, maintaining your trademark rights in Kenya requires using and properly maintaining your trademark, renewing your trademark registration, and monitoring its use by others. By taking these steps, you can protect your valuable trademark asset and ensure that it continues to serve as a valuable tool for distinguishing your brand and building customer trust.