Madrid Trademark Designations in Kenya: Why KIPI’s Examination Is Not Just a Formality

Madrid trademark designations of Kenya can still meet a substantive objection after WIPO has recorded them. A common assumption among foreign trademark owners is that once WIPO records an international registration designating Kenya, protection is more or less secured unless something unusual happens. That assumption is unsafe. Under the Madrid Protocol, the Kenyan Office is entitled to notify a provisional refusal, and Kenya made declarations when it joined the Protocol in 1998 that lengthen the time in which it may do so. For owners and instructing counsel, the practical consequence is that a designation remains open to challenge for longer than the standard period many Madrid users have in mind.

Kenya’s Accession Declarations Lengthen the Refusal Period

Kenya deposited its instrument of accession to the Madrid Protocol on 26 March 1998, and the Protocol entered into force for Kenya on 26 June 1998. The instrument was accompanied by two declarations. Under Article 5(2)(b), Kenya replaced the Protocol’s one-year time limit for notifying a provisional refusal with 18 months. Under Article 5(2)(c), Kenya specified that the 18-month limit does not prevent a refusal based on an opposition from being communicated after that limit has expired, in relation to applications in which Kenya is designated.

WIPO’s own working papers show that these were not universal choices. A 2019 paper prepared for the Madrid Working Group recorded that, of 104 Contracting Parties to the Protocol at the time, 60 had made the Article 5(2)(b) declaration and 39 had also made the Article 5(2)(c) declaration. An earlier paper from August 2000 listed Kenya among the Contracting Parties that had made the Article 5(2)(c) declaration. Those figures are a snapshot from the dates of the papers, and current declarations should be checked against WIPO’s records.

One Year or 18 Months: A Point Docketing Often Misses

The same 2019 paper draws a distinction that matters in practice. It records that Kenya is among 16 Contracting Parties that are bound by both the Madrid Agreement and the Protocol and have made the Article 5(2)(b) declaration. For those Contracting Parties, the one-year time limit applies to a mark in an international registration where the holder’s Contracting Party is also bound by the Agreement, and the 18-month limit applies to all other international registrations. In other words, the 18-month period is not a blanket rule for every designation of Kenya, and the applicable period depends on the holder’s country. The right docketing approach is to identify the holder’s Contracting Party first and then to apply the period that results.

The August 2000 paper also explains what a “refusal” means in this setting. Under the Madrid system, the Office of a designated Contracting Party is required, within the applicable period, simply to indicate the grounds which may lead to a denial of protection, so the notification is a statement of objections or a provisional decision of refusal rather than a final decision. It further explains that notifying a refusal based on an opposition after the 18-month period implies that the Office informed the International Bureau, before that period expired, that oppositions may be filed later, and that the notification is made within a prescribed window after the opposition period begins. The detailed rules have been amended since 2000, so counsel should consult the current Common Regulations before relying on those specifics.

What the Trade Marks Act Says

Part VIIB of the Trade Marks Act deals with international applications. Section 40B contains definitions, including “international trade mark”, meaning a mark entitled to be protected in Kenya under the Madrid Agreement and the Madrid Protocol. Section 40C empowers the Cabinet Secretary to make rules giving effect in Kenya to the Banjul Protocol and the Madrid Agreement and Protocol, and the rules may provide for the filing of applications for international registration through the Institute, the procedures where the basic application in Kenya fails, the communication of information to the International Bureau, and fees.

Section 40D is the point of contrast. It provides that a mark registered by ARIPO under the Banjul Protocol, in which Kenya is a designated state, has the same effect and protection in Kenya as a mark registered under the Act, unless the Registrar communicates to ARIPO a decision that the mark shall have no effect in Kenya. We have not found an equivalent provision for Madrid designations in sections 40B to 40C. Nor does the Act, on its face, say how an incoming Madrid designation is to be processed, so owners should not assume that a designation is treated as granted by default. Opposition, in domestic practice, is governed by section 21, under which an accepted application is advertised and any person may give notice of opposition within the prescribed time.

What This Means in Practice for Cross-Border Owners

A provisional refusal, whether based on the Office’s own objections or on a third-party opposition, can arrive later than the one-year baseline that applies in many Madrid jurisdictions. Owners and counsel should not treat the absence of an early notification as confirmation that the Kenya designation is safe. Docketing should record the holder’s country, the applicable period under Kenya’s declaration, and the possibility of a later refusal based on opposition, and the file should not be closed simply because twelve months have passed without incident.

It is also sensible to run a watch on Kenyan applications and advertisements that may conflict with the international registration, since opposition under section 21 of the Act is available to any person once an application has been advertised. A client that learns of a conflicting Kenyan application early has more time to plan its response than one that waits for a notification from the International Bureau.

A Note on Broader Regional Commentary

Industry commentary on the Madrid Protocol in Africa has, for some years, observed that some African Madrid members have struggled to examine designations and notify refusals on time. That commentary is worth reading, but we have not verified which countries fall into that category against WIPO’s own designation and refusal statistics, and this article makes no claim about Kenya’s practice beyond what Kenya’s declarations and the statute show.

Frequently asked questions

This article is general information on Kenyan law as at its publication date, not legal advice. Reading it does not create an advocate and client relationship.