Upgrade trademarks registry services


Azziad Nasenya (Centre), a Kenyan social media personality, displays a Certificate of her Trade Mark after receiving it from John Onyango (2nd R), Acting Managing Director, Kenya Industrial Property Institute (KIPI). FILE PHOTO | NMG

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 the 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 elite.

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 trademarks, 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 popularise 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.

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 are 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 database.

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.

The writer is a Senior Partner at DLA Piper Africa Kenya, IKM Advocates.

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