Understanding Trademark Infringement
Trademark infringement in Kenya occurs when someone uses a mark that is identical to or confusingly similar to a registered trademark without authorisation, in a manner likely to deceive or cause confusion among consumers regarding the origin of goods or services.
This can include using similar names, logos, slogans, or even domain names that mimic a registered trademark, especially within the same industry.
In Kenya, trademarks are governed by the Trade Marks Act (CAP 506), and Kenya is also a party to the WIPO Madrid Convention. These laws protect against unauthorised use of registered trademarks.
How to Identify Trademark Infringement
To determine if your trademark is being infringed upon, consider the following:
- Similarity in Branding – If another business uses a name, logo, or slogan that closely resembles yours, it may cause confusion among consumers.
- Consumer Confusion – It indicates possible infringement if customers mistakenly associate another product or service with your brand.
- Unauthorised Use in Marketing – If your trademark appears in another company’s advertisements, packaging, or promotional materials without permission, it is likely being misused.
- Counterfeit Products – Fake versions of your products bearing your trademark can harm your brand’s reputation and sales.
- Domain Name and Online Presence – If someone registers a domain name (copycat domains and websites) or social media handle similar to your trademark, it may be an attempt to mislead customers.
Steps to Safeguard Against Trademark Infringement
If you suspect infringement, take the following steps:
- Conduct a Trademark Search – Before registering a trademark, perform a search through the Kenya Industrial Property Institute (KIPI) to ensure your mark is unique.
- Register Your Trademark – Official registration with KIPI is the strongest protection as it grants you exclusive rights to use the mark and legal protection against infringement. To understand the process of Trademark Registration in Kenya, please read our previous article: A Guide to Trademark Registration Process in Kenya
- Monitor Your Brand – Regularly check marketplaces, online platforms, and business directories for unauthorised use of your trademark.
- Document the Infringement: In case of suspected infringement, collect evidence such as product samples, screenshots, photos, customer complaints, advertising materials, and records of sales or distribution of the infringing goods
- Send a Cease-and-Desist Letter – If infringement is detected, issue a formal warning demanding that the infringing party stop using your trademark. This is often the first step before litigation.
- File a Legal Complaint – If the infringer does not comply, you can institute legal proceedings in the High Court of Kenya. The available remedies include:
- Injunctions: Court orders to stop the infringing use immediately.
- Destruction or Forfeiture: Orders for the destruction or surrender of infringing goods.
- Damages or Account of Profits: Compensation for losses suffered or surrender of profits made by the infringer.
- Punitive Damages: In cases of willful infringement
- Engage in Alternative Dispute Resolution – Mediation or arbitration can be used to resolve disputes without lengthy court proceedings.
- Involving Regulatory Authorities –The Anti-Counterfeit Authority (ACA) and the Kenya Revenue Authority (KRA) can assist in seizing counterfeit or infringing goods at points of entry or within the market.
- Ongoing Protection – Engage trademark watch services to monitor applications or registrations that may conflict with your rights and renew your registration every 10 years.
- Oppose Similar Trademarks – If you notice an infringing mark being published in the Kenya Gazette, file an opposition within 60 days under Rule 52 of the Trademark Rules.
- Educate Your Customers – Raise awareness about your brand so that customers can recognise and report any fake or counterfeit products.
- International Protection – If your business operates beyond Kenya, consider registering your trademark under the World Intellectual Property Organisation (WIPO) or the African Regional Intellectual Property Organisation (ARIPO) for broader protection.
Conclusion
Trademark infringement can harm your business reputation and erode consumer trust, but proactive measures, such as registration, monitoring, and legal enforcement, can safeguard your brand. By understanding the legal framework and taking swift action, businesses in Kenya can protect their trademarks and maintain their market integrity.
Safeguard Your Intellectual Property with Njaga & Co. Advocates
Protecting your intellectual property is essential for the growth, reputation, and competitive advantage of your business. At Njaga & Co. Advocates LLP, we offer comprehensive legal support to help you secure, manage, and enforce your IP rights in Kenya and beyond.
How We Can Assist You:
- Expert IP Registration: Our experienced team will guide you through the entire process of registering trademarks, patents, copyrights, and industrial designs. We conduct thorough preliminary searches, prepare and file applications, and ensure compliance with all legal requirements to maximise your chances of successful registration.
- Strategic IP Advice: We provide tailored advice on the best strategies to protect your intellectual property, including brand development, licensing, assignment, and commercialisation. Our insights help you understand your rights and how to leverage them for business growth.
- Enforcement & Dispute Resolution: If your IP rights are infringed, we act swiftly to enforce your rights through cease-and-desist letters, negotiations, and, where necessary, litigation. We represent you in opposition proceedings, court actions, and alternative dispute resolution forums to secure injunctions, damages, and other remedies.
- International Protection: For businesses with regional or global ambitions, we facilitate trademark registration through ARIPO, OAPI, and the Madrid System, ensuring your brand is protected across multiple jurisdictions.
- Technology & Media Law Support: In the fast-evolving digital landscape, we help you navigate technology law, data protection, and ICT contracts, safeguarding your innovations and digital assets.
Why Choose Njaga & Co. Advocates?
- Deep expertise in intellectual property law and technology matters
- Personalised, cost-effective solutions tailored to your business needs
- Commitment to client success, confidentiality, and professionalism
- Proven track record in both registration and enforcement of IP rights
Take Action Today
Don’t leave your ideas, brand, and innovations unprotected. Contact Us for a consultation and let our skilled IP team secure your rights, defend your interests, and help your business thrive in a competitive market.
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Consult a qualified advocate for personalized legal guidance.
