Following the expiry of their trademark licences, about 2,162 brands in Kenya are at the risk of losing their market protection rights. The Kenya Industrial Property Institute (KIPI), custodian of trademarks in the country, has said it would revoke the trademark licenses of the products from its register if their owners fail to renew their respective trademark licences by next Wednesday.
Global brands racing against the July 15 deadline include Colgate, Philips, Vaseline, Smirnoff, Total Gas, Hennessy and Hennessy Cognac.
According to Kenya’s Trademarks Act, registration has a 10-year validity from the date of application. But within 6 months to its expiry date, the registrar is required by law to notify a brand of the imminent expiry of its trademark.
In a prior notice published on June 15, 2020, John Onyango, the acting Managing Director of Kenya Industrial Property Institute (KIPI), stated that “where no application for renewal of a trademark published herein is received within 30 days from the date of this publication, the trademark shall be forthwith removed from the Register of Trade Marks.” He also added that that the proprietors of the affected marks have until July 15 to renew them.
In Kenya, trademark protection may be obtained through registration or use. Although trademarks could be protected through use, brands are advised to register the trademark by filing the appropriate application form with the KIPI, in order to gain stronger protection, particularly in the case of conflict with an identical or confusingly similar trademark.
Under the trademark Act, Kenyan Citizens may or may not use the services of a trademark agent to register a mark. However, foreigners must use the services of a local agent. No one is entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark.
The KIPI has also revealed that the trademarks for many of these brands have long expired. For instance, Colgate trademark expired in 1998, Vaseline (2008), Hostess (2008); Total Gas (2010) Hennessy (1981) and Philips (1983), Pepsi (1998), Smirnoff (expired 2017), Skoda (2009) and IBM in 1980.