Restoring a Removed Trademark at KIPI: Rule 68, Fees and the Choice to Refile

A Kenyan trademark that is not renewed does not simply lapse. It moves through a notice, an advertisement and a removal, and only then to a discretionary route back onto the register. Restoring a removed trademark at KIPI is possible under rule 68 of the Trade Marks Rules, but it is not a right, and the time that passes after removal can decide whether restoration or a fresh filing is the better choice. This article explains how removal happens, what restoration requires and how to choose between restoring and refiling.

How a mark comes to be removed

Section 23(3) of the Trade Marks Act (Cap. 506) allows the Registrar to remove a mark if the renewal conditions are not met at expiry. The Rules give that power a sequence. Under rule 65 the Registrar notifies the registered proprietor of the approaching expiry. If the renewal fee is unpaid on the expiry date, rule 67 requires the Registrar to advertise the fact in the Journal or the Kenya Gazette. If the fees are still unpaid thirty days after that advertisement, rule 68 allows the Registrar to remove the mark from the register as of the date the last registration expired. Rule 69 then requires the register to record the removal and its cause. Our article on trademark renewal at KIPI covers the earlier stages.

The restoration route under rule 68

Rule 68 also supplies the way back. On payment of the renewal fee on Form TM 10, together with the additional restoration fee, the Registrar may restore the mark to the register if satisfied that it is just to do so, and on conditions the Registrar thinks fit. KIPI’s fee schedule sets the restoration fee at KES 5,000 for a local proprietor or USD 250 for a foreign proprietor, on top of the renewal fee of KES 4,000 or USD 200 for the first class. A foreign owner restoring a single-class registration therefore pays USD 450 in official fees on KIPI’s published schedule, before professional fees.

Three features of the rule deserve attention:

• The test is discretionary. The Registrar must be satisfied that restoration is just, and may attach conditions.
• Section 44 of the Act protects the proprietor’s right to be heard. The Registrar may not exercise a discretion adversely to the registered proprietor without giving an opportunity of being heard, if the proprietor duly asks for it within the prescribed time.
• As published on Kenya Law, rule 68 does not state a time limit for applying. In our view a Registrar deciding what is just is likely to look at the length of the delay and at any rights third parties have acquired meanwhile, but that is our reading, not something the rule says.

There is also a gap that the Rules do not close. Removal takes effect as of the expiry date, and rule 68 does not say whether restoration reverses that. We have not found Kenyan authority on the point, so an owner should assume that enforcement rights for the period between expiry and restoration may be contested.

The one-year rule in section 23(4)

Section 23(4) gives a removed mark a limited afterlife. For the purpose of any application to register a trade mark made within one year after the removal, the removed mark is deemed still to be on the register. The proviso removes that effect where the court or the Registrar is satisfied either that there was no bona fide trade or business use of the removed mark in the two years before its removal, or that no deception or confusion would be likely from the use of the later applicant’s mark because of any previous use of the removed mark. In practice, a third party who files for a similar mark soon after your removal can still meet your old registration as an obstacle, which buys time but does not replace restoration. KIPI’s Practice Note Seven also directs that where an examiner provisionally refuses a later mark because of an earlier mark that is due for renewal, and the rule 65 notice has not yet issued, the notice is to be issued immediately and the later applicant told its date, so that the notice period can be calculated.

Restore or refile?

Restoration keeps the original registration on the register, which is its main attraction. Refiling starts a new application with a new filing date, a fresh examination and advertisement, and exposure to any similar marks filed in the interval. Four questions usually decide the choice:

• How long ago was the mark removed? The longer the gap, the harder it is to argue that restoration is just.
• Has anyone filed a similar mark since? A search of the register answers this and may favour restoring quickly.
• Has the mark been in continuous use? Use supports the case for restoration and reduces exposure to a later non-use attack; see our guide to removal for non-use under section 29.
• Does the owner need continuity of the original registration for licences, security or an existing dispute? If so, restoration is worth pursuing even if a protective new filing is made alongside it, which is a point to settle with counsel.

Practical steps

First, obtain the current register position and confirm the removal date and the advertisement. Second, search for later filings that conflict with the mark. Third, file Form TM 10 with the renewal fee and the restoration fee, and add a short statement explaining the delay and the continued use of the mark. Fourth, if the Registrar is minded to refuse, ask to be heard under section 44. Finally, diarise the next renewal window so that the exercise is not repeated. Foreign owners acting through a new representative should also read our guide to local agent requirements at KIPI.