Trademark Expungement Proceedings in Kenya

Trademarks are among the most valuable intellectual property assets a business can hold. Yet in Kenya, the Trademarks Register carries thousands of marks that are no longer in genuine commercial use, dead marks that still occupy valuable space on the register, blocking new entrants and stifling legitimate competition. Trademark expungement proceedings exist precisely to clean up the register and restore fairness to the marketplace.

Trademark expungement proceedings in Kenya are among the most powerful legal tools available to challenge, cancel, remove, rectify, or limit the registration of a trademark that should not remain on the register. For businesses, investors, distributors, brand owners, franchisors, and entrepreneurs, understanding trademark cancellation proceedings, trademark removal for non-use, rectification of the trademark register, and how to defend a trademark against expungement is essential to protecting brand value and market position.

What are trademark expungement proceedings?

Expungement (also known as rectification) is the legal action filed before the Registrar of Trademarks seeking to remove or vary a registered trademark from the Kenya Industrial Property Institute (KIPI) Register. It ensures that the Register is accurate and reflects only marks that are legitimately in use or registered with sufficient cause. They are initiated by an “aggrieved person” or, in some cases, by the Registrar, where it is alleged that the registration was wrongly made or wrongly remains on the Register. They are governed primarily by the Trademarks Act (Cap 506) and the Trademarks Rules.

Expungement may be sought on grounds such as:

• The trademark was registered without sufficient cause
• The mark is non-distinctive, deceptive, or contrary to law
• The owner has not used the trademark for a continuous period of 5 years (non‑use)
• The registration was obtained through misrepresentation or bad faith
• The mark conflicts with earlier rights or is confusingly similar to an existing trademark.

What are the main grounds for filing a trademark expungement application?

Kenyan law recognizes several distinct grounds on which a mark may be expunged or rectified. Decisions and rulings by the Registrar (KIPI) and the High Court have clarified that expungement is concerned with the legality and propriety of the continued existence of a mark on the Register. The essential question is whether an entry was made without sufficient cause or wrongly remains on the Register. The applicant must clearly identify and plead the applicable ground(s):

1. Non-Use (Sections 15 & 16, Trademarks Act)
   This is the most frequently invoked ground. A registered mark may be removed from the register where it has not been used in Kenya, either by the proprietor or with the proprietor’s consent, in relation to the goods or services for which it is registered, for a continuous period of five years or more before the application date. Non-use must be without good reason.
2. Absence of Bona Fide Use at Registration (Section 15)
   Where, at the time of registration, there was no bona fide intention to use the mark in Kenya, and it has not in fact been used.
3. Mark Remaining on Register Without Legitimate Purpose (Section 26)
   The court or Registrar may rectify where the absence of any entry, or the existence of any entry, wrongly remains on or is absent from the register, including clerical errors, errors in registered particulars, or changes in ownership.
4. Bad Faith (Section 12(2))
   A registration obtained in bad faith; for example, where the applicant knew of another party’s prior use, or filed merely to block competition, may be declared invalid.
5. Absolute Grounds of Invalidity (Section 12)
   These include marks that were inherently non-registrable at the time of registration: marks that are devoid of distinctive character, purely descriptive, or contrary to morality or public policy.
6. Relative Grounds of Invalidity (Section 14)
   Registration may be challenged where it conflicts with an earlier trade mark or earlier right, for example, a well-known mark, a prior registered mark, or a mark with an established reputation in Kenya.
7. Proprietor’s Conduct Rendering the Mark Deceptive or Misleading
   Where, through the proprietor’s acts or omissions, the mark has become the common name in the trade for the goods or services, or has become deceptive as to quality, nature, or geographical origin.

Who can file trademark expungement proceedings, and on what legal threshold?

The applicant must be a “person aggrieved”, meaning a party whose legal or commercial interests are affected by the presence of the mark on the Register. Persons who have been held to have standing include:

• A trader who wishes to register an identical or similar mark but is blocked by the existing registration.
• A competitor who claims the registered mark owner is not using the mark in trade.
• A licensee whose license has been terminated and who challenges the proprietor’s right.
• A prior user who did not register the mark but has common law rights based on use.
• A business that has entered the Kenyan market and finds the market in conflict with its global brand.
• Any person with a legitimate commercial interest who can demonstrate they are adversely affected.

The applicant must demonstrate a real and tangible interest, not a mere busybody concern; Kenyan rulings regularly treat locus standi as a threshold question.

Substantively, to succeed in expungement under section 35, an aggrieved person must plead and prove at least one of the following:

• The entry was made in the Register “without sufficient cause” (e.g., registrability defects, conflict with earlier rights, misrepresentation).
• The entry “wrongly remains” on the Register (e.g., non‑use, misleading registration, change of circumstances making the registration improper).
• There has been a contravention or failure to observe a condition attached to the registration under section 36.

Where non‑use is invoked, the applicant must show a lack of bona fide use for the relevant statutory period (typically five continuous years) or absence of good‑faith intention to use at registration. In all cases, the burden of proof lies on the party seeking expungement.

Where do you file trademark expungement proceedings in Kenya?

An aggrieved party has two main forums, depending on the circumstances:

1. Registrar of Trade Marks (KIPI)
   • Many expungement applications are filed first before the Registrar using the prescribed forms (e.g., TM 25 for rectification/expungement) together with a statement of case and filing fees.
   • The Registrar acts in a quasi‑judicial capacity, receives pleadings and evidence, conducts a hearing, and issues a written ruling.
2. High Court of Kenya
   • Sections 35 and 53 permit filing directly at the High Court by an aggrieved person, or by way of appeal or judicial review against a Registrar’s decision.
   • The High Court is the ultimate forum on questions of rectification and can order expungement, variation, or substitution of entries.

The choice of forum may depend on case strategy, complexity, the need for interim relief, and issues of timing, and should be assessed carefully with counsel.

What is the step-by-step procedure for expungement proceedings before the Registrar?

The proceedings before the KIPI Registrar follow the administrative procedure below:

How do you defend your trademark against expungement?

If you receive notice that an expungement application has been filed against your trademark, prompt and strategic action is essential. The law gives you the right to defend your registration, and the primary vehicle for doing so is the Counterstatement. You must act within 42 days (unless an extension is granted).

1. Filing a Counterstatement: You must file Form TM 6, outlining the grounds on which you rely to support your registration.
2. Evidence of Use: You must provide Statutory Declarations (affidavits) and exhibits (invoices, advertisements, receipts) proving the mark is active in the Kenyan market.

Special Defenses:

• Proper Reasons for Non-Use: Force majeure, government regulatory delays, import bans, or industry-wide disruption may constitute proper reasons excusing non-use.
• Use Through a Licensee: Genuine use by a registered or even unregistered licensee, with the proprietor’s consent, counts as use by the proprietor.
• Partial Use / Partial Removal: Even if you have not used the mark in relation to all registered goods/services, you may successfully resist full expungement and limit removal only to specific unused goods/services.

What is the 7-year safeguard, and how does it protect a trademark from expungement?

One of the most important, and often misunderstood, protections available to trademark proprietors in Kenya is the seven-year incontestability safeguard found in Section 16(1) of the Trademarks Act

What the Safeguard Means in Practice:

Once a trademark has been on the Kenyan register for more than seven years, its original registration is conclusively presumed to be valid. This means an applicant seeking expungement after this period cannot challenge the original validity of the registration; they cannot argue the mark was inherently non-registrable, or that it lacked distinctiveness at the date of registration.

What the Safeguard Does NOT Protect Against:

The 7-year protection is not absolute. Even after 7 years, a mark may still be challenged on the following grounds:

• Fraud: The registration was obtained by fraudulent misrepresentation to the Registrar.
• Absolute Grounds under Section 12: The mark offends absolute prohibitions (e.g., it is contrary to public policy or morality, or is deceptive as to the nature of the goods).
• Non-Use: Importantly, the 7-year safeguard does not protect against a non-use expungement application. A mark that has been on the register for 10 years but not used for the last 5 years remains vulnerable to removal on non-use grounds.

What is the difference between trademark expungement and trademark cancellation or opposition?

These three concepts are closely related but procedurally and legally distinct:

How can businesses proactively protect their trademarks against expungement risk?

Proactive portfolio management is critical to avoid expungement vulnerabilities. Key risk‑mitigation measures include:

1. Register promptly: Do not delay trademark registration. An unregistered mark has no statutory protection against expungement proceedings — only common law rights, which are difficult and expensive to enforce.
2. Use it or lose it: Put the mark into genuine commercial use in Kenya across all classes and goods/services where it is registered. Avoid “dead wood” registrations for goods or services you never intend to use; they are prime targets for non‑use actions.
3. Maintain records and brand documentation: Keep systematic records of sales, invoices, marketing campaigns, digital presence, and licensing arrangements; these records become your evidence in defending against expungement. Regularly archive screenshots of websites and social media, especially before rebranding.
4. Register licensees: Formally record all trademark licences with KIPI to ensure that licensee use counts as proprietor use.
5. Monitor the register: Subscribe to a trademark watch service to catch conflicting applications before they proceed to registration.
6. Renew on time: Set calendar reminders for trademark renewals. Trademarks in Kenya are registered for 10 years and renewable for further 10-year periods.
7. Maintain correct details: Notify KIPI promptly of any change in proprietor name, address, or address for service.
8. Conduct periodic portfolio audits: Review your trademark portfolio annually with your advocates to identify unused marks, overlapping registrations, and any vulnerability to challenge.

How do you protect your business during a Trademark Assignment?

When selling or buying a business (assignment), you must ensure your IP isn’t lost or over-transferred. To protect your trade, you can use the following techniques or include the following clauses:

• Partial Assignment: You can assign a trademark for some goods/services while retaining it for others.
• Goodwill Clause: Clarify in the contract whether the “goodwill” of the business is being transferred with the mark.
• Clear Schedules: The contract must list every specific registration number. Anything not listed is not transferred.
• Registration: Under Section 28, an assignment is not technically effective against third parties until it is registered with KIPI.
• Retained Marks Clause: If the assignor is retaining any marks (e.g., marks used in other product lines or jurisdictions), these should be explicitly listed and excluded from the assignment. Ambiguity in this regard is a frequent source of post-assignment disputes.
• Non-Competition / Non-Confusion Clause: To prevent the assignor from subsequently registering new marks that are confusingly similar to the assigned marks — thereby undermining the assignee’s investment – include a clause restricting the assignor from applying for or using confusingly similar marks in the agreed territory for a defined period.

How Njaga & Co Advocates Can Help You

Trademarks are the cornerstone of brand identity, competitive advantage, and business value. Whether you are looking to challenge a competitor’s deadwood registration, defend your own mark against an expungement application, navigate the trademark dimensions of a business acquisition, or simply ensure your IP portfolio is watertight, you need experienced legal counsel who understands both the law and the commercial stakes.

At Njaga & Co Advocates, we provide end-to-end trademark services, including:

• Trademark searches, clearance opinions, and registration before KIPI.
• Filing and prosecuting trademark expungement and removal applications on your behalf.
• Drafting and filing Counterstatements and leading the defence of your registrations against expungement.
• Representing clients at hearings before the KIPI Registrar, the Industrial Property Tribunal, and the High Court.
• Conducting IP due diligence on trademark portfolios in M&A and business acquisition transactions.
• Drafting, reviewing, and negotiating trademark assignment and licensing agreements.
• Recording assignments, licenses, and changes of particulars at KIPI.
• Trademark watch services to monitor the register for conflicting applications.
• Handling trademark infringement actions, passing off claims, and interim injunctions.
• Advising businesses on brand protection strategy, market entry, and international trademark filings.

We bring deep expertise in Kenyan intellectual property law, a track record of success before KIPI, the Industrial Property Tribunal, and the High Court, and a commitment to providing practical, business-focused legal advice, not just legal opinions.

Disclaimer: This article provides general information and does not substitute legal advice on specific circumstances of any individual or organization. While the information is accurate as of the date published, we cannot guarantee it remains accurate at the time you read it or that it will stay current. Before acting on any of this information, please seek professional legal advice tailored to your situation.