A Guide to Trademark Review, Recordal, and Renewal in Kenya

What is a trademark in Kenya?

A trademark in Kenya is any distinctive sign capable of distinguishing the goods or services of one undertaking from those of another. It may consist of words, names, signatures, numerals, devices, logos, labels, colors, or combinations thereof, used or proposed to be used in relation to goods or services.

Trademarks in Kenya are governed principally by the Trade Marks Act, Cap 506, and the Trade Marks Rules, as administered by the Kenya Industrial Property Institute (KIPI).

What is a trademark review in Kenya?

Trademarks review in Kenya is the periodic legal and administrative assessment of a registered or pending mark to ensure that the registration details, use, and protection strategy remain accurate, compliant with the Trade Marks Act (Cap 506), and commercially aligned with the brand owner’s interests. It typically includes:

• Checking the status of the mark on the KIPI register.
• Confirming renewal dates and deadlines.
• Ensuring that license agreements and franchise arrangements are recorded.
• Confirming that all assignments, mergers, or changes of name have been reflected in the register.
• Assessing infringement risks and third-party conflicting marks.

Why is regular review of trademarks critical?

Regular review helps ensure that your registration details (such as the proprietor’s name, address, and the specification of goods/services) match the current commercial reality, which is vital for enforcement and renewals. It also helps identify conflicting or infringing marks in time to oppose or challenge them, protecting your brand from dilution and consumer confusion.​

When should a trademark owner in Kenya conduct a review?

A review is advisable after any corporate change (e.g., restructuring, merger, or acquisition), after signing licence or franchise agreements, when expanding into new product or service classes, and in the period leading up to renewal. Many brand owners also conduct annual IP audits to monitor their portfolios and confirm that all recordals and renewals are up to date.

What is Recordal of Licenses?

Recordal of licenses or registration of the registered user means formally entering a trademark license (or user agreement, franchise agreement, etc.) into the official register at KIPI so that the licensee’s use of the mark is legally recognized as authorized.

In simple terms, it is the official registration of a license agreement so that:

• The license is effective against third parties.
• The licensee’s use aligns with the proprietor’s benefit, helping preserve and strengthen the mark.
• The relationship between proprietor and licensee is clear and enforceable.

Why is Recordal of Licenses Important in Kenya?

While the Act does not strictly mandate recordal of a license, doing so is highly advisable and a critical step to safeguard the trademark’s validity and enforceability. The key reasons include:

1. Protection Against Non-Use: Under Section 36 of the Trade Marks Act, a trademark can be cancelled if it has not been genuinely used for a continuous period of five years. Use of the mark by a formally Registered User is deemed equivalent to use by the proprietor. Failure to record the license means the licensee’s use cannot be legally counted to defend the mark against a non-use cancellation action.
2. Enforcement Rights: A formally recorded Registered User (licensee) is often in a stronger legal position to initiate infringement proceedings against third parties, in their own name or on behalf of the proprietor, providing an extra layer of protection against counterfeiters.
3. Commercial Credibility: Recordal provides public notice of the authorized use, enhancing transparency for investors, financial institutions, and business partners. It demonstrates a well-managed Intellectual Property (IP) strategy.
4. Quality Control: The Registrar requires the license agreement to include control clauses. Recording the license helps ensure the proprietor maintains oversight of the mark’s use, safeguarding the brand’s quality and reputation.
5. Clarity of rights: It avoids disputes between the proprietor and licensee over the scope of use, territory, goods/services, and quality control standards.

What can go wrong if licences are not recorded?

If licences are not recorded, challenges may be raised that the licensee’s use does not support the proprietor’s rights, potentially weakening the registration. It may also complicate enforcement because infringers can argue that use is not clearly authorized, and authorities may hesitate to act where licensing status is unclear.

How is a trademark license recorded in Kenya?

While the Trade Marks Act and Rules govern the precise procedure, the general steps include:

1. Identify the type of change
   • Determine whether you need to record an assignment/transmission, a change of proprietor’s name or address, a change of address for service, or a registered user/licence.​
   • Confirm the relevant rule and prescribed form (e.g. TM14, TM20, TM32, TM48, TM49, TM50) under the Trade Marks Rules.
2. Preparation of recordal documents
   • For assignments/transmissions: prepare and execute a deed of assignment or other proof of title, and if necessary, have it stamped and legalized/notarized (especially for foreign documents).
   • For change of name/address: obtain a certificate of change of name, corporate resolution, or similar evidence, plus identification of the existing registration(s).
   • For registered users/licences: prepare the licence or registered user agreement and a joint statement of permitted use, goods/services, territory, duration, and quality control provisions, as required by the Rules.
3. Complete the prescribed form
   • Assignment/transmission: the person who becomes entitled to the mark applies in Form TM14, citing the trade mark number(s), class(es), and particulars of the assignment or transmission.​
   • Change of name/description: the registered proprietor uses Form TM20 to apply to change the name or description in the register, attaching proof of the change.​
   • Change of address or address for service: a request is made using the appropriate form (commonly TM32 or equivalent) specifying the new address details.​
   • Registered user/licence: the registered proprietor and proposed registered user apply jointly using Form TM48; any variation or cancellation of the registered user entry is done using Forms TM49 and TM50.
4. File with the Registrar and pay fees
   • Lodge the completed form(s), supporting documents, and the prescribed fee with the Registrar of Trade Marks at KIPI, either directly or through an agent/advocate.​
   • If using an agent, ensure a power of attorney/authority (TM1 or equivalent) and address for service in Kenya are on file for the relevant proprietor
5. Examination of the recordal request
   • The Registrar examines whether the applicant has a valid title or interest and whether the formal requirements (correct form, complete information, proper execution, translation/legalisation if needed, and fee payment) are satisfied.​
   • Where information is incomplete or unclear, the Registrar may issue an official query requesting clarification, further documents, or amendments within a specified time.
6. Entry on the register and notification
   • Once satisfied, the Registrar records the change by entering the new proprietor, registered user, or updated particulars in the Trade Marks Register, including name, address, and details of the assignment, transmission, or licence.​
   • The Registrar then issues an official endorsement or notification confirming the entry, and in some cases publishes the relevant particulars in the Kenya Industrial Property Journal.

What is the Renewal of Trademarks in Kenya?

Trademark renewal is the process of extending the validity of a registered trademark beyond its initial protection period. It ensures continued exclusive rights over the mark and prevents lapses in protection. Renewal does not change the scope of the mark but simply continues the existing registration for a new ten‑year term.

How long are trademarks valid for in Kenya?

A registered trademark in Kenya is valid for 10 years from the date of registration. Thereafter, it is renewable indefinitely for further periods of 10 years each, upon payment of the prescribed renewal fees.

This means that, in theory, a trademark can last forever, so long as it is renewed and properly maintained.

How does renewal differ from a new application?

A renewal relates to an existing registration number and does not require a fresh registrability examination of the same mark in the same classes, unless there are exceptional circumstances. A new application, by contrast, is examined from scratch for distinctiveness, similarity to prior marks, and compliance with the Act and Rules.

What is the timeline for renewal of trademarks?

• Renewal must be filed before the expiry of the 10-year term.
• KIPI allows a grace period of 90 days after expiry, subject to payment of late fees.
• After this grace period, the mark may be removed from the register, requiring re-registration.

What is the trademark renewal procedure in Kenya?

The proprietor or its agent files the appropriate renewal form, cites the registration number and classes, and pays the prescribed renewal fees to the Registrar. Once renewal is accepted, the Registrar updates the register and issues confirmation (often in the form of an endorsement or certificate showing the new expiry date).

What are the consequences of non-renewal of trademarks in Kenya?

Failure to renew a trademark in Kenya has serious implications:

1. Removal from the register: The trademark may be removed/cancelled from the KIPI register once the renewal deadline and any grace period lapses.
2. Loss of exclusive rights: The proprietor’s exclusive right to use the mark in respect of the goods/services lapses, exposing the brand to misuse.
3. Loss of enforcement rights: It becomes extremely difficult (sometimes impossible) to take successful legal action for infringement, since the statutory basis for the claim is lost.
4. Risk of third-party registration: Third parties may seize the opportunity to register similar or identical marks, potentially in bad faith, leading to expensive opposition or cancellation proceedings.
5. Commercial and reputational damage: Loss of registration may reduce brand value, affect licensing/franchising revenues, and complicate mergers, acquisitions, and due diligence, as the IP asset may be considered weakened or lost.

What is recordal of the change of name or address of the proprietor in Kenya?

Recordal of change of name or address is the process of updating the register when the proprietor changes its legal name or principal address, by filing the relevant forms and supporting documents. This ensures that the register shows the correct owner details, which is important for enforcement, renewals, and official communications from the Registrar.​

What is assignment recordal?

Assignment recordal is the registration of the transfer of ownership of a trademark from one proprietor to another, whether by sale, merger, or group restructuring. The assignee usually files the assignment documents and prescribed forms so that the register reflects the new proprietor, with the Registrar endorsing the assignment upon satisfaction with the title.​

How does recordation for anti-counterfeit and customs purposes relate to trademarks?

Kenya’s anti‑counterfeit framework allows for the recordation of intellectual property rights, including trademarks, with enforcement agencies to facilitate border measures against counterfeit goods. When trademarks and associated licensing or distribution details are correctly recorded, authorities can more readily intercept infringing goods at the border.​

What role does ongoing monitoring play in trademark review?

Ongoing monitoring of the trademark journal and marketplace enables proprietors to spot conflicting applications and infringing use, and to lodge oppositions or take enforcement action in good time. Monitoring is often integrated with periodic reviews to keep registrations aligned with business strategy and territorial expansion.

What is the relationship between Kenyan national trademarks and regional/ international trademarks?

In the broader strategy, owners should consider:

• National registrations in Kenya via KIPI.
• Regional registrations under ARIPO (African Regional Intellectual Property Organization), designating Kenya, where applicable.
• International registrations via the Madrid System (designating Kenya) for foreign proprietors.

A thorough review includes ensuring that:

• All layers (national, regional, and international) are harmonized and renewed on time.
• Assignments, licenses, and changes of name/ address are consistently recorded across all systems.

Why should businesses and brand owners in Kenya take trademark review and recordal seriously?

An unreviewed, unrecorded portfolio is like an expensive house with no title deed or updated records. Key reasons for review and recordal of trademarks include:

• Legal certainty: The register reflects the true owner, licensees, and other interests.
• Stronger enforcement: Courts and enforcement agencies are more likely to act swiftly and decisively when the register is accurate and updated.
• Commercial value: Trademarks are key intangible assets. Proper review and recordal preserve and increase their valuation.
• Regulatory compliance: It demonstrates good corporate governance and compliance with Kenyan IP laws.
• Risk mitigation: It reduces the risk of loss of rights, disputes, and costly litigation.

How can Njaga & Co. Advocates LLP assist with trademark review, recordal, and renewal in Kenya?

At Njaga & Co. Advocates LLP, we are a premier Kenyan law firm with our expertise in Intellectual Property (IP) and Technology, Media, and Telecommunications (TMT) Law. We are well-positioned to assist individuals and corporates with the entire lifecycle of trademark protection in Kenya.

We offer comprehensive trademark services, including:

• Trademark registration: Conducting searches, filing applications, and securing certificates.
• Review and recordal: Drafting and negotiating robust licensing, franchising, or assignment agreements. Formally recording licenses with KIPI to establish the status of Registered Users and defend against non-use actions. Providing due diligence reviews of existing portfolios.
• Renewal management: Tracking deadlines and filing renewals to avoid lapses.
• Trademark enforcement and dispute resolution: Acting against infringers through cease-and-desist letters, litigation, or negotiations.
• Strategic advisory for local and foreign clients: Advising foreign multinationals, SMEs, start-ups, and local enterprises on brand protection, franchising, and international expansion.

When should I contact Njaga & Co. Advocates LLP about my trademarks?

You should consider engaging us when:

• You are launching a new brand, product, or service in Kenya.
• You already have trademarks but are unsure of their status or renewal dates.
• You have licensed your brand (or intend to do so) and need to record license agreements.
• You are acquiring or selling a business and need to transfer or confirm ownership of trademarks.
• You suspect infringement or counterfeiting of your brand.
• You are a foreign company seeking to expand, license, or franchise in Kenya or across the region.

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.