Trademark Change of Name and Address at KIPI: Recording Ownership Changes and Partial Surrender

A Kenyan trademark register is only as useful as it is accurate. KIPI sends renewal notices to the details on the register, courts look to the register for proof of title, and a buyer or investor will read it in diligence. A trademark change of name, address or owner therefore has to be recorded, not just agreed. This article explains the four changes owners most often need, namely a new address, a new name, a new owner and a surrender, the forms and official fees for each, and the consequences of leaving the register out of date.

Address changes are an obligation

Rule 81(1) of the Trade Marks Rules says a proprietor or registered user whose trade or business address changes, so that the register entry becomes incorrect, “shall forthwith” request the Registrar to alter it on Form TM 17. A change in the address for service in Kenya is dealt with separately on Form TM 32 under rule 81(2). Section 64 of the Act requires an applicant or agent with no residence or business in Kenya to give an address for service here, and rule 13 lets the Registrar require the same of a registered proprietor.

KIPI’s fee schedule lists Form TM 17 at KES 2,000 (local) or USD 100 (foreign) for the first class and KES 1,000 or USD 50 for each subsequent class, and Form TM 32 as free of fee. The practical stake is the renewal reminder: rule 65 requires the Registrar to notify the registered proprietor before expiry, and an outdated address means that notice may never arrive. Our article on trademark renewal at KIPI explains why that is dangerous.

Changing the owner’s name is not an assignment

Section 37(1) of the Act lets the Registrar, on request by the registered proprietor, correct an error in the proprietor’s name, address or description, or enter a change in them. Under rule 85(2) the request is made on Form TM 17, TM 19, TM 20, TM 23 or TM 32, as appropriate, and rule 85(4) confirms that Form TM 20 may be used to change the proprietor’s name where it merges with another corporation and the resulting company has a different name.

The fee for Form TM 20 is KES 3,000 (local) or USD 150 (foreign) for the first trade mark and KES 500 or USD 50 for each additional mark; Form TM 19 for corrections is KES 2,000 or USD 100 for the first class. The distinction that matters is between the same legal person under a new name, which is a name change, and a different person taking the mark, which is an assignment or transmission. Rebrandings and mergers usually fall into the first group; sales and group reorganisations that move marks to a new company fall into the second. For errors in the original filing, see our article on correcting a trademark filing error at KIPI.

Recording a new owner

Section 28(1) requires a person who becomes entitled to a registered mark by assignment or transmission to apply to the Registrar to register that title. Rule 71 prescribes Form TM 14, and rule 73 requires the applicant’s name, business address and description, together with a copy of the instrument under which title is claimed; the Registrar may require an attested copy, which is not open to public inspection, and may call for further proof of title under rule 75. KIPI’s schedule lists Form TM 14 at KES 3,000 (local) or USD 150 (foreign) for the first class of each mark, and KES 2,000 or USD 100 for each subsequent class.

Recording is not a formality. Section 28(3) provides that a document for which no register entry has been made is not admitted in evidence in any court as proof of title to the mark, except as between the parties to it, unless the court directs otherwise. An unrecorded assignment can therefore leave the new owner unable to prove title in an enforcement action, and it will show up as a gap in due diligence; see IP due diligence for cross-border M&A and our guide to trademark licensing and assignment.

Two features of assignments deserve attention. First, under section 25(7), where a mark is in use in a business and is assigned otherwise than with the goodwill of that business, the assignment does not take effect until the assignee has applied to the Registrar, within six months or any extended period the Registrar allows, for directions on advertisement and has advertised it as directed; rule 80 uses Form TM 41 and rule 76 requires proof that the directions were followed. Second, section 25(4) can invalidate an assignment that would leave different persons with overlapping exclusive rights in resembling marks for the same goods, and the Registrar may certify a proposed assignment under section 25(5).

Surrendering a mark in whole or in part

Section 36A allows a proprietor to surrender a registered mark for some or all of the goods or services covered. Rule 84A prescribes Form TM 21 for a full surrender and Form TM 22 for a partial one. The application must name every person with a registered interest, such as a registered user, and the proprietor must certify that each has been given at least ninety days’ notice, is not affected, or has consented. The Registrar then publishes a notice of the surrender in the Journal or the Kenya Gazette. The KIPI fee is KES 1,000 or USD 50 for each form.

Owners tend to consider partial surrender where part of a specification is no longer used, since an unused class or product line is the natural target of a non-use attack under section 29; see removal for non-use under section 29. We have not found a provision in the Rules for reversing a surrender, so treat it as final and take advice before filing.

A sequence for foreign owners

Before a renewal or a transfer of instructions, take a current register extract and check the owner’s name, address, address for service and agent against the client’s records. Correct the name and address first, record any unrecorded assignments next, and only then renew or appoint a new agent. Appointing an agent is done by signing an authority on Form TM 1 or another written form the Registrar accepts under rule 14(2), and KIPI’s schedule lists a fee of KES 1,000 or USD 50 for it. Our guide to local agent requirements at KIPI explains who may act.