Trademark Clearance at KIPI: Preliminary Advice, Register Searches and Classification

Trademark clearance is the work done before filing to find out whether a mark can be registered and used without colliding with someone else’s rights. KIPI offers two official requests that help, and both use Form TM 27, but they answer different questions. This article explains what each one does, what a register search cannot tell you, and how the choice of goods, services and classes affects everything that follows.

Two KIPI requests, one form number

Preliminary advice on distinctiveness. Section 43 of the Trade Marks Act (Cap. 506) and rule 20 let a person who proposes to apply ask the Registrar whether the mark appears, prima facie, to be inherently adapted to distinguish the goods or services within section 12, or capable of distinguishing them within section 13. The request is made on Form TM 27 with duplicate representations of the mark. This advice concerns distinctiveness only. It does not tell you whether someone else already owns a similar mark. If the advice is favourable and the application follows within three months, a later objection on distinctiveness grounds entitles the applicant under section 43(3) to repayment of the filing fee on giving notice of withdrawal; under rule 20(2) that notice must be given within two months of the objection.

Register search. Rule 114 lets any person ask the Registrar to search, in respect of specified goods and services, whether any mark is on record that resembles the mark supplied. The request is also made on Form TM 27 with duplicate representations, and the Registrar informs the requester of the result. This is the conflict check. KIPI’s fee schedule lists the preliminary advice fee at KES 3,000 (local) or USD 150 (foreign) for the first class and KES 2,000 or USD 100 for each subsequent class, and the search fee at KES 2,000 or USD 100 for the first class and KES 1,000 or USD 50 for each subsequent class. The Rules make both requests optional.

What a register search cannot tell you

Section 15(1) directs the Registrar not to register a mark that is identical with or nearly resembles a mark of a different proprietor already on the register for the same goods or services, subject to the honest concurrent use exception in section 15(2). A rule 114 search helps you anticipate that objection, but it has limits:

• Unregistered rights. Section 5 bars infringement actions on unregistered marks but preserves passing off, so a business with an established but unregistered brand can still complain. It will not appear in a register search.
• Well-known marks. Section 15A protects well-known marks without local registration; see our article on well-known marks in Kenya.
• Opposition. Third parties can oppose after publication, whatever the search showed; see KIPI trademark opposition.
• Marks removed for non-renewal. Under section 23(4), a mark removed for non-payment of the renewal fee is still treated as on the register for one year for the purpose of later applications, unless the Registrar is satisfied of no use in the previous two years or no likelihood of confusion. A search should therefore look at recently removed marks; our article on restoring a removed trademark explains the point.
• Cited marks that are due for renewal. KIPI’s Practice Note Seven directs that where an examiner refuses a later mark because of an earlier mark due for renewal, and the rule 65 notice has not yet issued, the notice is issued and the applicant is told its date. An earlier owner may renew, so do not assume a lapse.
• Unused earlier marks. A citation may be removable if the earlier mark has gone five years without bona fide use; see removal for non-use under section 29.

Whether two marks “nearly resemble” each other is a judgement on the marks, the goods and the market, not something a search result decides.

Choosing goods, services and classes

Registration is granted in respect of particular goods or services under section 6, and section 54A allows the Nice Classification to be taken into account by the Registrar. Rule 25 treats applications for the same mark in different classes as separate and distinct, and deems the registration for each class to be a separate registration for all the purposes of the Act. That has practical effects. The application fee is charged per class (KES 4,000 or USD 200 for the first class and KES 3,000 or USD 150 for each further class, on Form TM 2), renewal fees are charged per class, and a non-use attack under section 29 can target individual goods or services.

Rule 29A allows goods or services, including a new class, to be added later on Form TM 55, at KES 3,000 or USD 150 per class, but the Rules then apply as though it were an application for registration. Drafting the specification well at the start is cheaper than adding to it. It is also safer to list only goods and services the owner genuinely intends to use: the first ground in section 29(1) targets marks registered without a bona fide intention to use them, and the High Court has expunged a mark on that basis in Agricare East Africa Limited v Osho Chemicals Industries Ltd [2019] KEHC 9409 (KLR).

A practical clearance sequence

List the markets and classes that matter first. Commission a rule 114 search for each core class. Check for well-known marks, unregistered users and recently removed or unrenewed earlier marks. Where the mark is descriptive, geographical or otherwise borderline, consider preliminary advice on distinctiveness before filing. Only then file, remembering that section 64 requires an overseas applicant or agent to give an address for service in Kenya; our guide to local agent requirements at KIPI explains who may act, and our guide to registering a trademark in Kenya covers the filing that follows. Once the mark is registered, keep the register accurate; see trademark change of name and address at KIPI.