On 30th June 2017 the Registrar of TradeMarks published Practice Directions on the renewal of trademarks in the Industrial Property Journal -No 2017/06 which effectively does away with the additional 30 day notice period for the renewal of trademarks.
Trademarks in Kenya are under KIPI (Kenya Industrial Property Institute).
The provisions for the renewal of trade marks are found under Section 23 of the Kenya Trade Marks Act CAP 506 (The Act) and rule 64 to 70 of the Trade Mark Rules (the Rules). The Act provides for renewal of trade marks upon expiry of 10 years from the effective date of registration or from the date of last renewal. The Rules provide that where the renewal fee has not been received on the due date, the Registrar shall publish the removal of the trade mark. Prior to the publication of the notice of removal of the trade mark the registrar must issue a 60 day notice to the registered proprietor of the trade mark. The rules further provide that the Registrar may issue a further 30 day notice to the registered proprietor of the trade mark. It is on the basis of the Registrars discretion that he has decided to unilaterally discontinue issuing the additional 30 day notices and only issue 60 day notices before the publication of the notice of removal.
The Registrars Practice Directions also addresses renewal notices in the context of provisional refusals based on an existing registration due for renewal. The practice directions state that, where the Examiner of Trade Marks provisionally refuses registration of a later mark on account of the existence of an earlier trade mark that is due for renewal and whose 60 days notice under Rule 65 had not been duly issued, the Examiner shall ensure that the notice is immediately issued and shall, in the provisional refusal letter notify the applicant of the later trade mark of the actual date of notice for the purposes of determining the date when the 60 day period under Rule 65 expires.
It is my hope that with the Registrars decisions, the renewal process will now be more streamlined and that the Registrar will diligently publish the notice of removals within the allocated time.
This article was first published on Rouse Africa’s blog IPKaribu as part of their July roundup of IP news in Africa.