Trademark applications division is long overdue

In our everyday lives we are exposed to dozens of trademarks. We see them on products and their packaging, billboards, TV advertisements, social media pages, brochures and flyers, magazine pages etcetera.

Large corporations, small and medium-sized enterprises and even single individual businesses all recognise the value of trademarks. A ‘trademark’, or simply a ‘mark’, is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of others.

A mark is protected by its registration under the relevant trademark laws. Many countries also give protection to trademarks through their use in the marketplace, even though they are not registered. Even where a mark is protected through use, it is advisable to register it as a mark.

That is because such registration provides stronger protection, in case a dispute arises concerning a mark that will require the intervention of other persons or a court of law.

Before registering a trademark, the Trade Mark Offices must be persuaded that the trademark is distinctive. Additionally, the application must correctly cover goods or services, according to the International (Nice) Classification of Goods and Services (Nice Classification).

Under the Nice Classification, there are 45 classes under which goods or services can be registered. An enterprise can seek to protect its trademark in only one class or in multiple classes, depending on the need or circumstances.

Kenya follows the multi-class application system. Other examples of multi-class regimes include Rwanda and the United Kingdom. On the other hand, South Africa, Nigeria, Uganda, Mainland Tanzania, and the Island of Zanzibar are examples of single class regimes.

In countries that adopt the single-class application regime, an applicant can only file one trademark in one class of the Nice Classification. Under the multi-class application regime, an applicant can file for protection of one trademark in multiple classes of the Nice Classification, all in a single application.

While on the face of it, these regimes appear as mere alternatives in the pursuit of trademark protection, they both have some significant impact on the trademark application and registration processes.

The Kenya Industrial Property Institute (KIPI) assigns a single application number to a multi-class application at the time of filing. Subsequently, the application, though denoting interests across multiple classes representing multiple goods or services, is tied together under this one number.

This is different for example, from the single-class application regimes where an application with respect to each class must be made separately and assigned a separate trademark application number.

The multi-class application regime is not without its shortcomings. For example, the processing of an application could be slowed down, in case of a refusal during ex officio examination affecting only one or some of the classes.

A refusal due a conflict affecting only some of the goods or services in a multi-class application can easily be cured via a practical solution. That is the division of the trademark application.

This is where a trademark applicant makes a request to the Registrar for a division of the application for registration (the original or parent application) into two or more separate applications (divisional applications).

The applicant must specify the goods or services to which the divisional application relates, and also specify the goods or services to remain in the parent application. Each divisional application is treated as a separate application for registration with the same filing date as the original application.

Once a divisional application is made, the Registrar must amend the parent application by excluding the goods or services in respect of which the divisional application is made. That is unless the parent application has lapsed.

Division of pending applications can provide a solution where the ex officio examination reveals a conflict with a prior registered mark. That is, with respect only to some of the goods or services comprising a multi-class trademark application. Upon division of an application, prosecution of the non-conflicting classes can proceed as divisional applications.

The applicant can then separately seek to resolve the conflict affecting the goods or services in the parent application. Unfortunately, the Trade Marks Act does not provide for the division of trademark applications.

Currently, the only recourse available to an applicant in cases of such conflict is to delete the class or classes affected by the conflict.

There is need, therefore, to amend the Trade Marks Act to provide for the division of trademark applications. As it currently stands, trademark applicants are expected to essentially gamble with their applications and keep their fingers crossed.

The law ought to also be amended to make it possible for an applicant of a multi-class trademark application, to partially assign it to another party. Currently, there is no provision for the assignment of pending trademark applications. This is a great inconvenience and possibly a limiting obstacle business-wise.

Mr Opijah is the head of trademarks at Coulson Harney LLP (Bowmans). Mr Godofa is a lawyer