A trademark application filed with the wrong details does not always have a simple fix, and knowing which kind of error you are dealing with matters more than most applicants realise. Kenya’s Trade Marks Act draws a firm line between correcting a genuine clerical mistake and changing the mark itself, and only one side of that line is available once an application has been filed or a mark registered. This article covers what the Registrar of Trade Marks can and cannot correct, and what to do when your error falls on the wrong side of it.
The Legal Basis: Correction and Rectification Under the Trade Marks Act
The Trade Marks Act, Cap. 506, gives the Registrar two distinct correction powers, in two separate sections, and applicants frequently reach for the wrong one. Section 37 lets the Registrar, on request by the registered proprietor, correct an error or enter a change in the name, address or description of the registered proprietor of a trade mark, cancel an entry, strike out goods or services from the registration, or enter a disclaimer that does not extend the rights already granted. Section 37(2) extends the same correction power to a licensee’s name, address or description. Section 35 provides a broader, separate remedy: any person aggrieved by a non-insertion, omission, wrongly remaining entry, or any error or defect in the register may apply to the Registrar or, where an action is already pending, to the court, to have the register rectified. Under section 53, if proceedings concerning the mark are already before the court, the rectification application must go to the court rather than the Registrar.
What Counts as a Fixable Clerical Error
The errors sections 35 and 37 are built for are administrative: a misspelled proprietor name, an outdated registered address, an incorrect description of the proprietor’s legal form, a licensee’s details recorded incorrectly, or goods and services that were entered in error and need to be struck out. These are corrections to the record about the mark, not to the mark itself, and the Registrar has clear statutory authority to fix them on request without treating the registration as though it were a fresh application.
The Harder Case: When the Mark Itself Was Filed Wrong
A different and more consequential problem arises when the error is not in the surrounding details but in the mark as filed, most commonly where an applicant intended to register a stylised logo or device mark but the application was filed, or accepted, as a plain word mark, or the reverse. Section 38 of the Act allows a registered proprietor to apply for leave to add to or alter a registered trade mark, but only “in any manner not substantially affecting the identity thereof”, and any such alteration must be advertised and is open to opposition before the Registrar will grant it. Swapping a word mark for a stylised logo, or a logo for a different logo, is very unlikely to qualify as a change that does not substantially affect the identity of the mark. In practice, this means section 38 cannot be used to convert one filing type into the other after the fact. The correction and rectification powers in sections 35 and 37 will not help either, since neither is framed as a power to change what the mark actually is.
Why This Distinction Has Real Commercial Consequences
The practical result is that a genuinely wrong-type filing, word mark instead of the intended logo, or logo instead of the intended word mark, usually cannot be corrected within the original application or registration at all. The applicant’s real options are to file a fresh, correctly specified application for the mark actually intended, or, where the original application has not yet proceeded to acceptance, to withdraw and refile before advertisement rather than attempt an alteration that section 38 was never designed to allow. Filing a fresh application also means a new filing date and a new priority position, which matters if a competitor has filed anything similar in the interim, so the earlier the error is caught, the smaller the commercial cost of fixing it. An applicant who instead spends months trying to force a substantive change through the section 37 correction process risks a Registrar’s refusal on the basis that the request falls outside that section’s scope, losing time that a prompt refiling would have saved.
How to Tell Which Situation You Are In
Before instructing anyone to “fix” a trademark filing, it is worth pinning down precisely what went wrong. If the mark as filed is exactly the mark you intended, and only the proprietor’s name, address, description, or the licensee details are wrong, sections 35 and 37 are the correct and relatively fast route. If the mark as filed is not the mark you intended, whether that is a word mark filed instead of a logo, a logo filed instead of a word mark, or a materially different design, no correction provision in the Act will reach it, and the practical route is a fresh application specifying the correct mark, filed as early as possible to preserve priority.
How We Can Help
Clay & Associates Advocates advises brand owners and applicants on trademark prosecution before the Kenya Industrial Property Institute, including correcting filing errors, rectification and refiling strategy. Our guide to registering a trademark in Kenya covers the filing process this article assumes as a starting point, and our coverage of the brand enforcement ladder addresses what happens once a mark is properly registered and needs to be defended. Contact our Intellectual Property practice to review a filing before it goes wrong, or to fix one that already has.
Sources: The Trade Marks Act (Cap. 506), sections 35, 37, 38 and 53.
Frequently asked questions
Can I ask KIPI to correct my trademark application from a word mark to a logo?
Generally no. Section 38 of the Trade Marks Act only allows an alteration that does not substantially affect the identity of the mark, and changing the form of the mark from a word mark to a stylised logo is very unlikely to qualify. A fresh application specifying the correct mark is usually the only reliable route.
What errors can the Registrar actually correct under section 37?
Errors in the registered proprietor’s or licensee’s name, address or description, cancelling an entry, striking out goods or services entered in error, and entering a disclaimer that does not extend the existing rights. It does not extend to changing the mark itself.
What is the difference between section 35 rectification and section 37 correction?
Section 37 is a narrower, proprietor-initiated correction of specific administrative details. Section 35 is a broader remedy available to any aggrieved person for an error, defect or wrongful entry in the register, and can be brought before the Registrar or, where an action is already pending, the court.
What should I do if I filed the wrong type of mark?
Act quickly. If the application has not yet been advertised, withdrawing and refiling correctly avoids the delay of contesting a Registrar’s refusal under section 38. If the mark is already registered, a fresh application will usually be required, and the sooner it is filed, the less risk that a competing filing takes priority in the interim.
