Removal for Non-Use Under Section 29: How Kenyan Trademarks Get Struck Off and How to Defend One

A Kenyan trademark registration is not safe simply because it exists. Removal for non-use under section 29 of the Trade Marks Act (Cap. 506) lets a person aggrieved ask the court or the Registrar to take a mark off the register, in whole or for some goods or services, if it has not been genuinely used. Kenyan courts have applied the section to expunge registered marks, and a renewal fee paid to KIPI does nothing to prevent it. This article explains the two grounds, how an application is made, what counts as use and how an owner can defend a mark.

The two grounds in section 29(1)

Section 29(1) allows removal in respect of any of the goods or services for which the mark is registered, on either of two grounds:

• No intention to use. The mark was registered without any bona fide intention on the registrant’s part to use it for those goods, and there has in fact been no bona fide use by any proprietor up to one month before the application.
• Five years of non-use. Up to one month before the application, a continuous period of five years or longer has passed during which the mark was registered and was not bona fide used for those goods by any proprietor.

Because the section speaks of “any of the goods or services”, removal can be partial. A mark used for one product in a class can survive for that product while being cut back elsewhere. Section 29(2) also lets the court or Registrar limit a registration where the mark is unused for goods sold in a particular place in Kenya or exported to a particular market, but only on the application of a person who has been, or might properly be, permitted to register an identical or similar mark for that use.

Court or Registrar, and how to apply

Any person aggrieved may apply, and the applicant may choose the court or, under section 53, the Registrar. If an action concerning the mark is already pending, the application must go to the court. Where the Registrar hears it, the Registrar may refer it to the court at any stage or decide it after hearing the parties, subject to appeal to the court. An application to the Registrar is made on Form TM 25 under rule 82 of the Trade Marks Rules, with a statement setting out the applicant’s interest, the facts relied on and the relief sought; the Registrar sends copies to the registered proprietor. Rule 83 applies the opposition procedure with modifications, and provides that the Registrar shall not remove the mark merely because the proprietor has not filed a counter-statement. KIPI’s fee schedule lists the Form TM 25 fee at KES 6,000 for a local applicant or USD 300 for a foreign applicant for the first class.

What counts as use

The Act widens what the proprietor can rely on. Under section 31(2), permitted use by a registered user is treated as use by the proprietor for the purposes of section 29. Section 33(1) lets the court or Registrar accept use of the mark with additions or alterations that do not substantially affect its identity. Section 34 treats applying the mark in Kenya to goods to be exported, and other acts done in Kenya for goods to be exported or services to be performed outside Kenya, as use of the mark. The mark must still be genuinely used for the goods or services concerned.

The High Court’s decisions show how strictly genuine use is judged:

• In ABSA Kenya Limited v Barclays Bank of Kenya [2020] KEHC 6116 (KLR), the court found that the plaintiff had not proved bona fide use of its Class 16 mark, and, applying the South African approach that token use merely to preserve the registration is not genuine use, ordered the mark expunged under sections 29(1)(a) and 35(1).
• In Agricare East Africa Limited v Osho Chemicals Industries Ltd [2019] KEHC 9409 (KLR), the High Court dismissed an appeal against the Registrar’s decision to expunge the mark “Mistress” in Class 5 at the instance of a competitor. The proprietor had no immediate plans to use the mark, and the court held that saying it intended to use it, or that it was a new business, was not enough under section 29(1).

Defences and limits

Under section 29(3), an applicant for removal on the five-year ground, or for a limitation under section 29(2), may not rely on non-use that was due to special circumstances in the trade and not to any intention to abandon the mark. Section 30 allows a proprietor of a well-known invented-word mark to register it defensively for other goods, and while so registered the defensive registration is not liable to removal for non-use under section 29. The proviso to section 29(1) also allows the tribunal to refuse an application in some cases where the mark has been used for services of the same description or for goods associated with those services. None of these defences is a substitute for evidence of use.

Protecting a portfolio in practice

An owner who wants to keep a mark should be able to show, for each class, dated use in Kenya. That means invoices, packaging, advertising and website captures that carry the mark as registered, kept by year. Licensees should be recorded as registered users so that their use counts under section 31(2); our guide to trademark licensing and assignment in Kenya explains that process. Owners of large or foreign portfolios should audit use class by class before each renewal and before any dispute; our IP portfolio audit checklist is a starting point. Note that renewal itself does not need proof of use, as we explain in our article on trademark renewal at KIPI, so the two exercises need to be run separately. A mark that has already been removed for another reason may be recoverable, as our article on restoring a removed trademark explains.