Disclaimers in Trademark Registration in Kenya

A business applying for trademark registration in Kenya may be asked to disclaim certain words, images, or other elements appearing in its proposed trademark. This frequently happens where a brand combines a distinctive name with descriptive wording, a geographical reference, or an element commonly used in the relevant industry.

A disclaimer deserves careful attention because it helps define the rights obtained through registration. However, disclaiming an element does not mean removing it from your trademark or abandoning protection for the trademark as a whole.

This guide explains trademark disclaimers in Kenya, their legal basis, common triggers, sample wording, registration procedures, and practical implications for trademark infringement and brand protection.

What is a disclaimer in trademark registration in Kenya?

A disclaimer is a formal statement, entered on the Register of Trade Marks, by which the trademark owner gives up any claim to the exclusive use of a particular word, letter, numeral, device, or other element contained in the mark. The mark is registered and protected as a complete unit, but the disclaimed element remains free for every other trader to use.

Disclaimers serve as a regulatory mechanism that ensures businesses can secure exclusivity over distinctive composite brand names and logos without monopolizing generic words, geographical names, industry-standard descriptors, or functional elements necessary for legitimate fair trade.

KIPI explains disclaimers using the example of “Pamoja Mineral Water”, where the words “Mineral Water” would be disclaimed. The words can remain within the trademark, but the proprietor does not acquire a monopoly over them and cannot stop other water bottlers from describing their product as mineral water.

What is the Statutory Basis of Trademark Disclaimers in Kenya?

The principal provision is section 17 of the Trade Marks Act, Cap. 506, which addresses registration subject to disclaimer.

It empowers the Registrar or the court to require a disclaimer when deciding whether a trademark should enter or remain on the register.

In summary, where a trademark either (a) contains any part that the proprietor has not separately registered as a trademark, or (b) contains matter “common to the trade” (or to the services in question) or which is otherwise non-distinctive, the Registrar or the court may, when deciding whether the mark should be entered on or remain on the register, impose as a condition that the proprietor:

1. disclaims any right to the exclusive use of any part of the mark, or of all or any portion of that common or non-distinctive matter, to which the tribunal holds the proprietor is not entitled; or
2. makes any other disclaimer the tribunal considers necessary to define the proprietor’s rights under the registration.

Section 17 also contains a statutory proviso: a disclaimer on the register does not affect any rights of the proprietor except those that arise from the registration of the trademark. This means common law rights (such as an action in passing off) remain intact if the public has come to associate that term or visual presentation uniquely with your enterprise through extensive use and goodwill.

Why are disclaimers required in trademark registration?

Disclaimers help to balance brand protection against fair market protection by preventing trademark registration from being interpreted as granting ownership of language pr imagery that other traders legitimately need. As such, disclaimers serve the following purposes:

1. Preventing Monopolies over Public & Common Terms: No single trader should monopolize everyday English or Swahili words, dictionary terms, or common trade words (e.g., words like “Safari”, “Pure”, “Super”, or “Nairobi”).
2. Protecting Competitors’ Fair Descriptive Use: Competitors must remain free to use functional or descriptive words to describe their own goods or services without fear of statutory infringement claims.
3. Defining the scope of rights. Rule 35 of the Trade Marks Rules allows the Registrar to call for a disclaimer so the public can generally understand what the applicant’s rights in the mark will be once it is registered.
4. Preserving Registry Integrity: Section 12 and Section 13 of Cap 506 require that registered marks in Part A or Part B be distinctive or capable of distinguishing goods/services. A disclaimer allows a mark that is overall distinctive to proceed to registration even if it contains non-distinctive sub-components.

Can a disclaimer be used to register a mark that is otherwise unregistrable?

No. A disclaimer is not a device for sneaking a non-distinctive mark onto the register. The mark, viewed as a whole, must still satisfy the distinctiveness requirements of Section 12 (Part A) or Section 13 (Part B).  To understand the trademark registration process and registrability, read our article on A Guide to Trademark Registration Process in Kenya

What Are the Common Triggers for a Disclaimer Requirement?

During examination of an application on Form TM 2, KIPI trademark examiners issue an official examination report (office action) citing conditions for acceptance. The most common triggers include:

These examples apply the distinction between distinctive branding and descriptive or common trade matter reflected in the Act and KIPI’s guidance. The outcome depends on the mark, its presentation, and the specified goods or services.

Before filing, applicants should ask: Which part of this mark would customers use to distinguish us from competing businesses?

Do disclaimers apply only to words, or also to logos and devices?

Section 17 refers to “any part” of the mark and to any “matter” that is common to the trade or non-distinctive, so disclaimers can apply equally to devices, pictures, shapes, numerals and letters. A composite logo combining a distinctive brand name with a generic image of the product (for example, a loaf of bread for a bakery) may be accepted subject to a disclaimer of the image.

Note that colour is dealt with separately. Under Section 19, a mark may be limited to specified colours; a mark registered without a colour limitation is deemed registered for all colours. A colour limitation is not a disclaimer, although both shape the scope of protection. See our earlier article on Trade Marks and Colour: Are You Protected Beyond the Specified Colours?

What Does an Official Trademark Disclaimer Statement Look Like?

When accepted by the applicant, the disclaimer is recorded on the application file, published in the Industrial Property Journal (or Kenya Gazette), and noted on the final Certificate of Registration.

1. A Single Word Disclaimer, to be adapted to the application and approved by the Registrar, is:
   Registration of this trade mark shall give no right to the exclusive use of the word “MINERAL WATER” when used separately from the trademark as a whole.
2. For multiple elements:
   Registration of this mark shall give no right to the exclusive use of the words “PREMIUM” and “COFFEE”, individually and separately from the trademark as a whole.
3. For device or numerical device:
   Registration of this mark shall give no right to the exclusive use of the device of [a cup / a cow / the map of Kenya] [or: the numeral “24”] separately and apart from the mark as a whole.

Three phrases in this formula do heavy lifting. “No right to the exclusive use” means you do not own the element on its own. “Separately” means the restriction applies when the element is used in isolation. “Apart from the mark as a whole” confirms that the complete mark, including the disclaimed element in its registered arrangement, remains your property.

How does a disclaimer affect my trademark registration and rights?

This is the question clients ask most, and the answer has three layers:

1. Your registration remains valid and enforceable. The mark is registered for the full ten-year term under Section 23 and is renewable indefinitely. Section 7 gives you the exclusive right to use the mark, but Section 7(2) makes that right subject to the conditions and limitations on the register, including the disclaimer.
2. You cannot sue for infringement based on the disclaimed element alone. Where the only similarity between your mark and a competitor’s is the disclaimed word, an infringement claim is unlikely to succeed. The comparison will focus on the distinctive, non-disclaimed elements. Read our article on Identifying Trademark Infringement in Kenya and Safeguarding Your Brand
3. Your common-law rights are preserved. The proviso to Section 17 limits the effect of a disclaimer to rights arising from that registration. Section 5 of the Act separately preserves the action for passing off. If you can prove goodwill in the disclaimed element and a misrepresentation causing damage, a passing off claim may still be available, although proving distinctiveness in a descriptive word is demanding.

How have Kenyan courts interpreted trademark disclaimers?

Two High Court decisions illustrate how disclaimers play out in litigation:

1. Mabati Rolling Mills Limited v Royal Mabati Factory Limited [2020] KEHC 9717 (KLR)
   The plaintiff owned the marks VERSATILE and ROYAL VERSATILE for colour-coated roofing sheets, registered with a disclaimer of the word TILE. The defendant, which had registered ROYAL VERSATILE itself, argued that because TILE was disclaimed, the plaintiff’s mark was effectively only “VERSA”. Okwany J rejected this. Reading the disclaimer plainly, the court held it barred only the exclusive use of TILE separately from VERSA, and that what the registration protected was the whole word VERSATILE and ROYAL VERSATILE. The court found infringement, ordered expungement or variation of the defendant’s registration, awarded KSh 2,000,000 in general damages, and granted an account of profits.Lesson: a disclaimer is read narrowly and does not dismantle a unitary mark. It removes protection only for the disclaimed element used on its own.
2. Emami Limited v Orange Pharma Limited [2020] eKLR
   The plaintiff’s pain balm mark EMAMI MENTHO PLUS was registered with a disclaimer of the words MENTHO and PLUS, each separately and apart from the mark as a whole. The defendant’s KALUMA MENTHO PLUS carried the identical disclaimer, as did a third party’s SONAPEN MENTHO PLUS. Majanja J held that the disclaimer meant only EMAMI was for the plaintiff’s exclusive use and only KALUMA for the defendant’s; neither party had exclusive rights in MENTHO or PLUS. Comparing the dominant words EMAMI and KALUMA and the packs’ get-up, the court was not satisfied at the interlocutory stage that confusion was likely and dismissed the injunction application. Crucially, the court also held that the plaintiff’s failure to disclose the disclaimer to the court was a material non-disclosure.Lesson: a disclaimed word is genuinely open to competitors, and a brand owner who seeks urgent relief must disclose any disclaimer on its certificate.

Can I challenge or negotiate a disclaimer requirement?

Yes. Section 44 of the Act and Rule 103 guarantee you an opportunity to be heard before the Registrar exercises a discretion against you, and Rule 33 allows you to object within 90 days. Effective strategies include:

1. Arguing the element is not descriptive of your particular goods or services (a word may be descriptive in one class and arbitrary in another).
2. Arguing the mark is unitary, so that the element cannot sensibly be separated, as the court reasoned in Mabati with VERSATILE.
3. Filing evidence of acquired distinctiveness through use, since Section 12(3)(b) allows the Registrar to consider whether the mark is in fact adapted to distinguish.
4. Proposing narrower wording, for example, disclaiming one word rather than a phrase.
5. Appealing to the High Court if the Registrar’s decision is unsatisfactory (Section 20(4) – (5)).

Key Things to Know About Trademark Disclaimers

Before accepting a disclaimer or enforcing a registered mark, remember:

1. Disclaimers are common and normal. Many strong Kenyan brands carry them; a disclaimer is not a rejection.
2. Read the disclaimer wording carefully. “Each separately” and “apart from the mark as a whole” define exactly what you keep.
3. Register the distinctive element separately where commercially important (Section 24(1)).
4. Search before you file. A KIPI search on Form TM 27 (Rule 114) shows how similar marks have been treated.
5. Keep the complete registration record. The certificate, register entry and examination correspondence should be reviewed together.
6. Identify the commercially important element. Ask whether the resulting protection supports how customers recognize the business.
7. Avoid overstating exclusivity. A registration should not be represented as granting rights over every individual word in the mark.
8. Voluntary vs. Imposed Disclaimers: While examiners frequently impose disclaimers as a statutory condition under Section 17, an applicant can also voluntarily enter a disclaimer upon filing to preempt office actions and expedite processing.
9. Impact on Licensing and Franchising: When drafting intellectual property assignments, franchising agreements, or registered user agreements under Section 31 of the Act, disclaimed elements must be clearly reflected to define the exact boundaries of the licensed rights.
10. Disclose disclaimers in litigation. Emami shows that hiding one can defeat an injunction.

Frequently asked questions about trademark disclaimers in Kenya

Q: Does every Kenyan trademark need a disclaimer?
A: No. The issue arises when the mark contains elements that require clarification of exclusive rights. A wholly distinctive mark may present no such concern.

Q: Is a trademark with a disclaimer weaker than one without?
A: It is narrower, not weaker. Your protection over the complete mark and its distinctive features is unaffected. Where the disclaimed word would never have been yours to monopolize anyway, the disclaimer simply records the legal reality.

Q: Can another party register the exact word I disclaimed?
A: They cannot register it as an exclusive standalone trademark if it remains non-distinctive or descriptive. However, another business can incorporate that same disclaimed word into their own distinct composite mark.

Q: Does registering a company name eliminate the need for a disclaimer?
A: No. Company-name registration and trademark registration serve different purposes. A trademark application requires its own assessment.

How can Njaga & Co. Advocates LLP assist with trademark registration in Kenya?

At Njaga & Co. Advocates LLP’s IP & TMT department, we assist businesses, entrepreneurs, and brand owners with trademark registration, intellectual property protection, and trademark disputes in Kenya.

Our assistance includes:

1. Trademark searches and clearance advice before adopting or filing a brand.
2. Registrability assessments covering distinctive, descriptive, and common trade elements.
3. Trademark application preparation and selection of appropriate goods and services.
4. Responses to KIPI examination objections, including disclaimer requirements.
5. Disclaimer drafting and review to ensure the limitation is appropriately expressed.
6. IP Commercialization & Licensing: Drafting trademark assignments, franchise agreements, and registered user agreements to protect your commercial interests.
7. Evidence preparation where acquired distinctiveness is relevant.
8. Trademark expungement, opposition proceedings.
9. Portfolio reviews, renewals, assignments and licensing advice. For a full guide to renewal obligations and the risks of non-renewal, see: A Guide to Trademark Review, Recordal, and Renewal in Kenya.
10. Trademark infringement and passing-off advice, including assessment of registration limitations before enforcement.

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.