What is a trade mark and how does colour feature in trade mark protection in Kenya?
Trade marks distinguish the goods or services of one business from those of another. Their primary function is to identify the commercial source of products and services, making it essential that they be distinctive themselves.
One of the most common ways businesses enhance the distinctiveness of their brands is through the consistent use of colour. Colour is one of the most immediate and instinctive elements of brand recognition. Consumers often identify products by colour before they read a name or logo. Over time, consumers often come to associate particular colours with particular businesses. For example, the colour green has become synonymous with Safaricom Kenya Limited’s brand identity. In everyday conversation, it is not uncommon to hear Safaricom referred to simply as “the green company/app.”
This raises an important question: where a trade mark is registered in specific colours, is protection limited to those colours alone?
What does the Trade Marks Act say about colour limitations in trade mark applications?
A trade mark application may be filed either with a limitation to specified colour(s) or without any limitation as to colour. This is an important strategic decision because it affects both the mark’s distinctiveness and the scope of protection available upon registration.
Section 91(1) of the Trade Marks Act provides that where a trade mark is limited, wholly or partly, to one or more specified colours, those colours are taken into account in determining the mark’s distinctive character. Thus, a trade mark with a colour limitation may more readily satisfy the distinctiveness requirement, thereby increasing its prospects of registration. Accordingly, where colour contributes to a trade mark’s distinctive character, claiming those colours in the application may assist the mark in satisfying the distinctiveness requirement and, consequently, improve its prospects of registration.
Additionally, section 19(2) of the Trade Marks Act provides that where a trade mark is registered without any limitation as to colour, it is deemed to be registered for all colours. This means that the proprietor of a trade mark registered without colour limitations enjoys protection for the trade mark in all colours. A proprietor may therefore prevent others from using a trade mark that is identical or confusingly similar to theirs, irrespective of the colour in which it is used.
What is the practical significance of Section 19(2) of the Trade Marks Act?
Section 19(2) is one of the most commercially important provisions in trade mark law for businesses that do not limit their registration to specific colours. It means that the registered proprietor may use their mark in any colour, and may enforce their rights against competitors regardless of the colour adopted by the infringer. A competitor cannot escape liability for trade mark infringement simply by using a different colour scheme if the underlying mark, in its non-colour elements, is identical or confusingly similar to the registered mark.
For a detailed understanding of what constitutes trade mark infringement in Kenya and the remedies available, see our article: Identifying Trademark Infringement in Kenya and Safeguarding Your Brand.
Why Register Without a Colour Limitation?
- A trade mark without claiming colour provides broader protection. A colour-neutral registration protects the mark irrespective of the colours in which it is used, giving businesses greater flexibility to refresh their branding, packaging or marketing materials without affecting the scope of their registered rights.
- The registered proprietor may use the trade mark in any colour without the need to obtain separate protection for each colour variation.
- Colour-neutral registration may strengthen enforcement by allowing the proprietor to challenge confusingly similar marks even where a competitor adopts a different colour scheme.
When should a business claim specific colours in its trade mark application?
Colors may at times be the distinguishing element. Where a particular colour or combination of colours has become an integral part of a brand’s identity and serves as an indicator of origin, a business may have a strong commercial interest in protecting the trade mark in those specific colours, particularly where competitors are likely to imitate its distinctive appearance.
There are scenarios where a colour-specific registration is not merely appropriate but strategically essential:
- When colour is the primary source identifier: if consumers identify the brand specifically by its colour, as with Safaricom’s green, then protecting that colour combination as a trade mark in its own right gives the proprietor a distinct legal weapon against colour imitators.
- When the mark is otherwise weak, Section 19(1) allows colour to bolster a mark’s distinctiveness. Where a mark might otherwise be refused as descriptive or non-distinctive, the inclusion of a striking colour claim may secure registration.
- When competitors are targeting the colour: if the market is characterized by colour imitation, a colour-specific registration on the KIPI register creates an official prior right that is enforceable through opposition, cancellation, and infringement proceedings.
- Where a brand colour has acquired substantial goodwill.
- When seeking international protection: for marks filed through the Madrid Protocol or ARIPO Banjul Protocol, colour claims are relevant to how the mark is examined in each designated jurisdiction.
What is the dual-filing strategy and why do sophisticated brand owners use it?
The dual-filing strategy is the most comprehensive approach to colour trade mark protection available under Kenyan law. It involves filing two separate trade mark applications for substantially the same mark:
- Application 1 – Colour-neutral: a registration without any colour limitation, securing broad protection for the mark across all colour uses.
- Application 2 – Colour-specific: a separate registration claiming the mark in its distinctive colour combination, protecting the specific visual identity that consumers recognise and associate with the brand.
Together, these two registrations give the brand owner dual lines of attack against infringers: one broad (the colour-neutral mark, enforceable against any use of the same or similar sign regardless of colour) and one targeted (the colour-specific mark, enabling colour-based claims and providing direct evidence of the brand’s colour rights on the official register).
Does registering two versions of the same mark create confusion or redundancy?
No. Each registration is an independent right with its own registration number and renewal cycle. They can be maintained, assigned, licensed, and enforced separately. Far from being redundant, the dual-filing strategy addresses a fundamental gap: a colour-neutral mark gives breadth but offers less direct protection against a competitor who has closely copied the specific colour identity of the brand; the colour-specific registration fills that gap directly.
Proper registration strategy, including filing in the correct Nice Classification classes, is also critical. For a comprehensive guide to the registration process at KIPI, including classification and procedural steps, see: A Guide to Trademark Registration Process in Kenya.
What Should Businesses Consider Before Filing a Colour Trade Mark?
Before filing, businesses should consider:
- whether colour is central to their branding;
- whether the mark is likely to change over time;
- whether competitors commonly use similar colours;
- the long-term enforcement strategy;
- the likelihood of future rebranding; and
- whether dual registration would offer stronger protection.
Seeking legal advice before filing can help avoid costly limitations in the future.
Frequently Asked Questions (FAQs)
Q: If I registered my trade mark in black and white, am I protected if a competitor copies it in colour?
A: Yes, under Section 19(2) of the Trade Marks Act, a registration without colour limitation (including a registration in black and white) is deemed to be registered for all colours. Your black-and-white registration therefore protects your mark in any colour variation. You may enforce your rights against a competitor using a coloured version of the same or a confusingly similar mark.
Q: My trade mark was registered specifically in our brand colours. Does this mean a competitor using the same mark in different colours does not infringe?
A: Not necessarily. Even with a colour-specific registration, infringement is assessed by reference to the overall impression created by the marks, the similarity of the goods or services, and the likelihood of consumer confusion. A competitor using the same mark in different colours may still infringe if consumers are likely to be confused about the commercial source. However, a colour-neutral registration would give you a stronger, cleaner enforcement position. This is one reason the dual-filing strategy is recommended.
Q: Can I oppose a competitor’s trade mark application based on colour similarity?
A: Yes. Under Rule 46 of the Trade Marks Rules, a person may oppose a trade mark application published in the Kenya Gazette within 60 days of publication. Where a competitor’s mark is confusingly similar to yours, including in terms of colour and overall visual impression, an opposition may be filed. The grounds of opposition include likelihood of confusion with an earlier mark and bad faith. Opposition proceedings are conducted before KIPI’s Registrar.
Q: What if a former business partner is now using a colour scheme and trade mark that we developed together?
A: This is a factually complex situation that requires urgent legal advice. The Kenyan courts have addressed the rights of former partners in relation to jointly developed trade marks and brands, including questions of bad faith registration and passing off. Where colour and brand identity form part of the disputed brand assets, the applicable legal principles are important to understand. See our detailed case analysis: Exclusive Use of a Trademark by a Former Partner After Separation: What Does Kenyan Law Say?
Q: How long does trade mark registration last in Kenya, and what happens if I do not renew?
A: A registered trade mark in Kenya is valid for 10 years from the date of registration and is renewable indefinitely for successive 10-year periods upon payment of the prescribed renewal fees. Failure to renew results in removal from the KIPI register, loss of exclusive rights, and exposure to third-party registration of the same or similar mark. For a full guide to renewal obligations and the risks of non-renewal, see: A Guide to Trademark Review, Recordal, and Renewal in Kenya.
How Njaga & Co. Advocates Can Assist
At Njaga & Co. Advocate’s IP and TMT department, we provide comprehensive intellectual property and brand protection services to businesses, entrepreneurs, startups, and international companies seeking to protect their trademarks in Kenya.
Our services include:
- Conducting preliminary trade mark availability searches.
- Advising on the most appropriate filing strategy, including colour and non-colour registrations.
- Preparing and filing trade mark applications before the Kenya Industrial Property Institute (KIPI).
- Responding to examination reports and objections.
- Representing clients in opposition and infringement proceedings.
- Advising on trade mark licensing, assignments, renewals and portfolio management.
- Assisting foreign businesses seeking trade mark protection in Kenya.
Whether you are launching a new brand or strengthening an existing one, we can help you develop a trade mark protection strategy that maximises the value and enforceability of your intellectual property.
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.
