KIPI trademark opposition is the process by which a brand owner challenges a trade mark application at the Kenya Industrial Property Institute before it is registered. Section 21 of the Trade Marks Act lets any person oppose an accepted application, and the Trade Marks Rules set out the forms, deadlines and evidence steps. Opposing early is usually cheaper and simpler than attacking a mark after it has been registered, so owners of existing marks should watch the advertisements and know the timetable before they need it.
How a trade mark reaches the opposition stage
Under section 21(1) of the Act, once an application has been accepted, the Registrar must advertise it in the prescribed manner. The advertisement sets out any conditions or limitations subject to which the application was accepted. The Registrar may advertise an application before acceptance in the cases the section describes. The advertisement opens the window in which others may object. If you want the background on filing your own mark, see our guide to Kenya trademark registration.
The 60-day deadline for KIPI trademark opposition
Rule 46 of the Trade Marks Rules provides that any person may, within sixty days from the date of any advertisement in the Journal or Kenya Gazette of an application, give notice of opposition to the Registrar in Form TM 6. Section 21(2) of the Act refers to the prescribed time, and the Rules supply it.
Treat the sixty days as a hard limit and diarise it from the date of the advertisement, not the date you notice it. If you miss the window, your remedies move to the more demanding procedures for removing a registered mark.
Who can start a KIPI trademark opposition
The Act says that any person may give notice of opposition. You do not have to be a competitor or even a trade mark owner, although in practice most opponents are brand owners who say the new mark is confusingly similar to theirs, or that it should not be registered for another reason. Common grounds include similarity to an earlier mark, lack of distinctiveness, and matter that is deceptive or contrary to the Act’s prohibitions on registration. Sections 12 and 14 of the Act deal with distinctiveness and with deceptive matter.
What the notice of opposition must contain
Section 21(3) requires the notice to be in writing, in the prescribed manner, with a statement of the grounds of opposition. Rule 47 adds detail. The notice must include the grounds. If you rely on resemblance to marks already on the register, you must set out the numbers of those marks and references to the Journals or Gazettes in which they were advertised. The notice must be accompanied by a duplicate, which the Registrar sends to the applicant.
Because the notice defines your case, take care over the grounds. Section 21(9) limits the grounds that can be raised on appeal to those already put forward, according to the text of the section, so a ground left out at this stage may be difficult to add later. Check that provision before you file.
The applicant’s counter-statement
Section 21(4) requires the Registrar to send a copy of the notice to the applicant. The applicant must then send a counter-statement of the grounds on which it relies. If it does not, it is deemed to have abandoned the application. Rule 48 sets the time at forty-two days from receipt of the duplicate notice, in Form TM 7, and requires the applicant also to say which facts in the notice it admits.
A counter-statement is not just a formality. It frames the applicant’s defence, and a weak or late one can end the application. For an applicant, the practical message is to instruct advisers as soon as an opposition notice arrives.
The evidence stage
If the applicant files a counter-statement, the case moves to evidence given by statutory declaration, on a timetable set by the Rules.
- Rule 49: within forty-two days after receiving the counter-statement, the opponent leaves its evidence in support of the opposition, in duplicate.
- Rule 50: within forty-two days after receiving the opponent’s declaration, the applicant leaves its evidence in support of the application.
- Rule 51: within thirty days after receiving the applicant’s declaration, the opponent may file evidence strictly confined to matters in reply.
Rule 52 deals with further evidence. Evidence of use, reputation and the likelihood of confusion is usually what decides these cases. Opponents should collect sales figures, promotional material, dates of first use and examples of actual confusion early, because the periods above are short.
The hearing in a KIPI trademark opposition
Rule 54 provides that, when the evidence is complete, the Registrar gives notice of a hearing date at least fourteen days ahead unless the parties agree to shorter notice. Under section 21(5), after hearing the parties if so required and considering the evidence, the Registrar decides whether, and subject to what conditions or limitations, registration is to be permitted. This is the point at which skilled written and oral argument counts most.
Neither the Act nor the Rules we reviewed sets a time within which the Registrar must decide. Opposition proceedings can take a considerable time, so plan launches with that uncertainty in mind.
Appealing the decision
Section 21(6) of the Act makes the Registrar’s decision subject to appeal to the court. Rule 117 states that an appeal is made by motion in the usual way, and no appeal will be entertained unless notice of motion is given within sixty days from the date of the decision appealed against, or within such further time as the Registrar allows. Section 21(8) allows a party to bring forward further material, in the manner prescribed or by special leave of the court. Rule 118 requires every application to the court under the Act to be served on the Registrar.
Since the appeal clock is also sixty days, decide quickly after the decision whether to challenge it. Our litigation and dispute resolution practice acts in trade mark appeals before the High Court.
Practical points before you file
- Check the advertisement date and calculate the sixty days at once.
- Identify your earlier rights, with registration numbers and certificates.
- Decide whether a negotiated outcome, such as a coexistence agreement or an amended specification, would serve you better than a contested hearing.
- Gather evidence of use and reputation before the evidence deadlines start to run.
The Trade Marks Act and Rules were last consolidated on Kenya Law at the end of 2022, so confirm with KIPI that no later amendment or practice direction has changed forms or fees. Check KIPI’s current fee schedule for fees.
How We Can Help
Clay & Associates Advocates handles KIPI trademark opposition work for brand owners who want to oppose a conflicting application and for applicants who face an opposition. We can set up a watching service, prepare the notice of opposition, counter-statement and statutory declarations, appear at the hearing and handle any appeal. See our intellectual property practice, read about our fees or contact us to discuss your matter.
Sources: Trade Marks Act (Kenya Law); Trade Marks Rules (Kenya Law)
Frequently asked questions
How long do I have to oppose a trade mark in Kenya?
Sixty days from the date of the advertisement in the Journal or Kenya Gazette, under rule 46 of the Trade Marks Rules, using Form TM 6.
How long does the applicant have to respond?
Forty-two days from receipt of the notice of opposition to file a counter-statement in Form TM 7. If it does not, it is deemed to have abandoned the application.
Can I appeal the Registrar’s decision?
Yes. Section 21(6) allows an appeal to the court, and rule 117 requires notice of motion within sixty days of the decision, unless the Registrar allows more time.
Who can file an opposition?
Under section 21(2), any person may give notice of opposition within the prescribed time.
