The Trade Marks Rules

Legal Notice 575 of 1956

This is the latest version of this Legal Notice.

The Trade Marks Rules

Citation: Legal Notice 575 of 1956
Primary work: Trade Marks Act
Date: 31 December 2022
Language: English
Type: Legal Notice
Original enactment: Download original enactment (PDF) (522.3 KB)

TRADE MARKS ACT

THE TRADE MARKS RULES

LEGAL NOTICE 575 OF 1956

Published in Kenya Gazette Vol. LVIII—No. 68 on 31 December 1956
Commenced on 31 December 1956

[Amended by Trade Marks (Amendment) Rules, 1959 (Legal Notice 454 of 1959) on 20 October 1959]
[Amended by Trade Marks (Amendment) Rules, 1970 (Legal Notice 44 of 1970) on 13 March 1970]
[Amended by Trade Marks (Amendment) Rules, 1971 (Legal Notice 138 of 1971) on 2 July 1971]
[Amended by Trade Marks (Amendment) Rules, 1975 (Legal Notice 131 of 1975) on 3 October 1975]
[Amended by Trade Marks (Amendment) Rules, 1988 (Legal Notice 249 of 1988) on 24 June 1988]
[Amended by Trade Marks (Amendment) Rules, 1991 (Legal Notice 50 of 1991) on 1 January 1991]
[Amended by Trade Marks (Amendment) Rules, 1995 (Legal Notice 42 of 1995) on 3 February 1995]
[Amended by Trade Marks (Amendment) Rules, 2003 (Legal Notice 146 of 2003) on 29 August 2003]
[Revised by 24th Annual Supplement (Legal Notice 221 of 2023) on 31 December 2022]

1. Citation

These Rules may be cited as the Trade Marks Rules.

2. Interpretation

In these Rules, except where the context otherwise requires—“agent” means a person appointed as an agent under rule 14;“specification” means the designation of goods or classes of goods or the description of services or classes of services in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered;“the office” means the office of the Registrar of Trade Marks;"specification" means the designation of goods in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered.[L.N. 42/1995, r. 2, L.N. 146/2003, r. 2.]

Fees and Forms

3. Fees

The fees to be paid in relation to trade marks shall be those prescribed in the First Schedule.

4. Forms

The forms referred to herein are the forms contained in the Fourth Schedule, and those forms shall be used in all cases to which they are applicable and shall be modified as directed by the Registrar to meet other cases.

5. [Deleted by L.N. 146/2003, r. 3.]

Classifications under previous system

6. Old classifications preserved

(1)This rule applies with respect to a trade mark registered for goods or services classified in accordance with a classification system that has been amended or replaced since those goods or services were classified.

(2)The goods or services described in paragraph (1) are not required to be reclassified in accordance with the new classification system unless application is made under rule 7.[L.N. 42/1995, r. 4, L.N. 146/2003, r. 4.]

7. Conversions to new classification system

(1)The registered proprietor of a trade mark described in rule 6(1) may apply to have the classification of the goods or services in respect of which the trade mark was registered adapted so that they are classified in accordance with section 6(2) of the Act.

(2)An application under this rule shall be made to the Registrar in Form TM 43.

(3)The Registrar shall determine what amendment he proposes to make in relation to an application under this rule and shall notify the applicant of that proposal as required under section 39(3) of the Act.

(4)The advertisement of the proposed amendment required under section 39(3) of the Act shall be made in the Journal or the Kenya Gazette.

(5)A person who wishes to oppose the proposed amendment shall do so by filing a notice of opposition with the Registrar within thirty days after the date of advertisement.

(6)The notice of opposition shall be in Form TM 44 and shall be filed in duplicate.

(7)The notice of opposition shall be accompanied by a statement, in duplicate, showing how the proposed amendment would be contrary to section 39(2) of the Act.

(8)The Registrar shall send the duplicate copies of the notice of opposition and the accompanying statement to the applicant.

(9)The applicant may file a counter-statement with the Registrar setting out fully the grounds on which the applicant contests the opposition.

(10)The counter-statement shall be in Form TM 7 and shall be filed in duplicate within thirty days after the applicant received the notice of opposition.

(11)The Registrar may allow or require evidence to be adduced and, if the Registrar so decides, rules 49 to 52 shall apply, with necessary modifications, subject to any directions given by the Registrar.

(12)Before deciding the matter, the Registrar shall give the parties an opportunity to be heard if either party requests it.

(13)If a party requests an opportunity to be heard, the Registrar shall give notice to the parties of a date when he will hear the arguments in the case.

(14)An appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice.

(15)Within seven days after the receipt of the notice a party who intends to appear shall so notify the Registrar in Form TM 8.

(16)A party who receives notice and who does not, within seven days after the receipt of the notice, notify the Registrar in Form TM 8 that he intends to appear, may be treated as not desiring to be heard and the Registrar may act accordingly.

(17)The Registrar shall make the entries in the register that are necessary to give effect to a request to adapt a classification if—

(a)the time for filing a notice of opposition has expired without such a notice being filed; or

(b)a notice of opposition has been filed but the Registrar has decided to allow the request.

(18)If the Registrar makes an entry under subrule (17) he shall also enter the date when that entry was made.

(19)No entry under this rule shall affect the period of registration of a trade mark or when it may be renewed.[L.N. 146/2003, r. 4.]

8. [Deleted by L.N. 146/2003, r. 4.]

Documents

9. Size, etc., of documents

Subject to any other directions that may be given by the Registrar, all applications, notices, counter-statements, papers having representations affixed or other documents authorized or required by the Act or these Rules to be made, left or sent, at or to the office or with or to the Registrar or the court, shall be on strong non-absorbent paper of a size approximately 297 mm by approximately 210 mm, and shall have on the left-hand part thereof a margin of not less than 35 mm.[L.N. 42/1995, r. 5.]

10. Signature of documents by partnerships, companies and associations

(1)A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any qualified partner stating that he signs on behalf of the partnership, or by any other person who satisfies the Registrar that he is authorized to sign the document.

(2)A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he is authorized to sign the document.

(3)A document purporting to be signed for or on behalf of an association of persons may be signed by any person who appears to the Registrar to be duly qualified.

11. Service of documents

(1)All applications, notices, statements, papers having representations affixed or other documents authorized or required by the Act or these Rules to be made, left or sent, at or to the office, or with or to the Registrar or the court or any other person, may be sent through the post by a prepaid or official paid letter.

(2)Any application or any document so sent shall be deemed to have been made, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post; and in proving the sending it shall be sufficient to prove that the letter was properly addressed and put into the post.

Address

12. Address

(1)Where any person is by the Act or these Rules bound to furnish the Registrar with an address, the address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of trade or business of the person whose address is given.

(2)The Registrar may require the address to include the name of the street and the plot number in the street of the premises.

13. Address for service

(1)The Registrar may require an applicant, opponent or agent, or a registered proprietor or registered user of a trade mark, who does not reside or carry on business within Kenya to give an address for service within Kenya, and that address may be treated as the actual address of that person for all purposes connected with the matter in question.

(2)Any registered proprietor or registered user of a trade mark, or any person about to be registered as such, may give in Form TM 32 an address for service for entry in the register, and such address may be entered by the Registrar.

(3)All applications in Form TM 32 under this rule shall be signed by the applicant for registration or the registered proprietor or registered user, as the case may be, or by an agent expressly authorized by him for the purpose of such an application, unless in exceptional circumstances the Registrar otherwise allows.

(4)In any case in which no address for service is entered in the register, the Registrar may treat the trade or business address of the registered proprietor or registered user as therein entered as his address for service for all purposes connected with the registration.

(5)Any written communication addressed to a party or person as aforesaid at an address given by him, or treated by the Registrar, as his address for service shall be deemed to be properly addressed.

(6)The Registrar, at any time that a doubt arises as to the continued availability of an address for service entered in the register, may request the person for whom it is entered, by letter addressed to his trade or business address in the register, to confirm the address for service, and if within three months of making such a request the Registrar receives no confirmation of that address he may strike it off the register.

Agents

14. Agency

(1)Except as otherwise required by these Rules, any application, request or notice which is required or permitted by the Act or these Rules to be made or given to the Registrar or the court, and all other communications between an applicant or a person making such a request or giving such a notice and the Registrar, or the court, and between the registered proprietor or a registered user of a trade mark and the Registrar or the court or any other person, may be signed, made or given by or through an agent.

(2)Any such applicant, person making request or giving notice, proprietor or registered user may appoint an agent to act for him in any proceeding or matter before or affecting the Registrar or the court under the Act and these Rules by signing and sending to the Registrar or the court, as the case may be, an authority to that effect in Form TM 1 or in such other written form as the Registrar or the court may deem sufficient.

(3)In case of such appointment, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so appointing him, all communications directed to be made to that person in respect of the proceeding or matter may be addressed to the agent, and all attendances upon the Registrar relating thereto may be made by or through the agent.

(4)In any particular case the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, registered user or other person.

Registrable Trade Marks and Preliminary Advice (Section 43)

15. Registrable trade marks

(1)The Registrar may refuse to accept any application for the registration of a mark upon which any of the following appear—

(a)the words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “Entered at Stationer’s Hall” or “To counterfeit this is a forgery”, or words to similar effect;

(b)representations of the Head of State of any foreign state, or any colourable imitation thereof;

(c)the words “Red Cross”, or “Geneva Cross”, and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours.

(2)Where there appears in a trade mark the registration of which is applied for a representation of a cross in any colour, not being one of those mentioned in paragraph (c) of subrule (1), the Registrar may require the applicant as a condition of acceptance to undertake not to use the cross device on red, or in white on a red ground or silver on a red ground, or in any similar colour or colours.[L.N. 44/1970, r. 2.]

16. Flags, emblems, arms, etc.

Representations in any form of any of the following, or any device so nearly resembling them as to be likely to lead to mistake, may not appear on trade marks the registration of which is applied for—

(a)without the written permission of the competent authority, any specified emblem, specified likeness or specified name within the meaning of section 2 of the National Flag, Emblems and Names Act (Cap. 99);

(b)without the written permission of the competent authority, any honour or award, or any title or abbreviation of a title thereof, created by the President;

(c)any armorial bearing, insignia or flag of any foreign state or international intergovernmental organization;

(d)any honour or award, or any title or abbreviation of a title thereof, of any foreign state;

(e)any title or abbreviation thereof of any international inter governmental organization.

[L.N. 44/1970, r. 3.]

17. Arms of city, etc.

Where a representation in any form of the armorial bearings, insignia, orders of chivalry, decorations or flags of any city, borough, town, place, society, body corporate, institution or person appears on a mark, the Registrar, before proceeding to register the mark, may require to be furnished with a consent to the registration and use of those emblems from such official or other person as appears to the Registrar to be entitled to give consent, and in default of that consent he may refuse to register the mark.[L.N. 44/1970, r. 4.]

18. Living persons or persons recently dead

Where the name or representation of any person appears on a trade mark, the Registrar may require, before proceeding to register the mark to be furnished with consent from him or, in the case of a person recently dead, from his legal representatives, and in default of that consent he may refuse to register the mark.

19. Name and description of goods or services on a trade mark

(1)Where the name or description of any goods or the name or description of any services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services, as the case may be, other than the goods or services so named or described.

(2)Where the name or description of any goods or the name or description of any services appears on a trade mark, and the name or description in use varies, the Registrar may permit the registration of the mark for these and other goods or services, as the case may be, and in that case the applicant shall state in his application that the name or description will be varied when the mark is used upon goods or services covered by the specification other than the named or described goods or services.[L.N. 42/1995, r. 6.]

20. Preliminary advice by Registrar as to distinctiveness

(1)A person who proposes to apply for the registration of a trade mark in relation to goods or services may apply to the Registrar for advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish the goods or services within the meaning of section 12 of the Act or to be inherently capable of distinguishing the goods or services within the meaning of section 13 of the Act.

(1A)An application under paragraph (1) shall be in Form TM 27 and shall be accompanied by duplicate representations of the trade mark.

(2)A notice of withdrawal of an application for the registration of a trade mark given under subsection (3) of section 43 of the Act for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given in writing within two months from the date of the notice of the Registrar’s objection.[L.N. 42/1995, r. 7, L.N. 146/2003, r. 5.]

Application for Registration of a Trade Mark

21. Form of application

(1)An application to the Registrar for registration of a trade mark shall be in Form TM 2 and shall be signed by the applicant or his agent.

(2)Every application claiming priority under section 65 of the Act shall state the date of the application in the United Kingdom or foreign state, and the applicant shall furnish a certificate by the Registrar or other registering authority of that country, or shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar.

(3)In the case of an application for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if it is registered.

(4)An application for registration of a trade mark that is three dimensional shall include a statement to that effect.

(5)An application for registration of a trade mark of which colour is claimed as an element shall include a statement to that effect.

(6)An application for registration of a trade mark that includes a word without regard to its graphical form shall include a statement to that effect.

(7)The specification of an application for registration of a trade mark for goods or services in more than one class, shall set out the classes in the same order as they appear in the classification referred to in section 6(2) of the Act.[L.N. 42/1995, r. 8, L.N. 146/2003, r. 6.]

22. Representation of mark

(1)Every application for the registration of a trade mark shall contain a representation of the mark in the space provided on the application form for that purpose.

(2)Where the representation exceeds the space in size, the representation shall be mounted upon linen, tracing cloth or such other material as the Registrar may consider suitable; part of the mounting shall be affixed in the space and the rest may be folded.

23. [Deleted by L.N. 146/2003, r. 7.]

24. [Deleted by L.N. 146/2003, r. 7.]

25. Separate applications

Applications for the registration of the same mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods or services in more than one class, whether on conversion of the specification under rule 6 or otherwise, the registration in respect of the goods or services included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.[L.N. 42/1995, r. 9.]

26. Representations to be satisfactory

The Registrar, if dissatisfied with any representation of a mark, may at any time require another representation satisfactory to him to be submitted before proceeding with the application.

27. Specimens of trade marks in exceptional cases

(1)Where a drawing or other representation or specimen cannot be given as prescribed in these Rules, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.

(2)The Registrar may also, in exceptional cases, deposit in the office a specimen or copy of any trade mark which cannot conveniently be shown by a representation, and may refer thereto in the register in such manner as he may think fit.

28. Series of trade marks

If application is made for the registration of a series of trade marks under section 24(3) of the Act, a representation of each trade mark in the series shall be included in the application.[L.N. 146/2003, r. 8.]

29. Transliteration and translation

(1)Where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, a sufficient transliteration and translation to the satisfaction of the Registrar of each of the words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.

(2)Where a trade mark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and the translation and name, if he so requires, shall be so endorsed and signed.[L.N. 146/2003, r. 9.]

29A. Application to add goods or services

(1)The proprietor of a registered trade mark may apply to the Registrar to add goods or services to the goods or services in respect of which the trade mark is registered, including goods or services in an additional class or classes.

(2)An applicant for the registration of a trade mark may apply to the Registrar to amend the application to add goods or services to the goods or services in respect of which the trade mark would be registered, including goods or services in an additional class or classes.

(3)An application under this rule shall be in Form TM 55.

(4)These Rules shall apply, with necessary modifications, with respect to an application under this rule as though it were an application for registration of a trade mark.[L.N. 146/2003, r. 10.]

Procedure on Receipt of Application for Registration of a Trade Mark

30. Search

Upon receipt of an application for the registration of a trade mark in respect of any goods or services, as the case may be, the Registrar shall cause a search to be made amongst the registered marks and pending applications for the purpose of ascertaining whether—

(a)in the case of an application relating to goods, there are on record for the same goods or for the same description of goods or for services or a description of services associated with the goods or goods of that description; or

(b)in the case of application relating to services, there are on record for the same services or for the same description of services or for goods or a description of goods associated with the services of that description,

any marks identical with the mark applied for, or which so nearly resembles it as to render the mark applied for likely to deceive or cause confusion, and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.[L.N. 42/1995, r. 10.]

31. Registrar’s powers on application

After a search, and consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar may accept the application absolutely, or he may object to it, or he may express his willingness to accept it subject to such conditions, amendments, disclaimer, modifications or limitations as he may think right to impose.

32. Objection by Registrar

If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within ninety days from the date of the communication the applicant applies for a hearing or makes a considered reply in writing to those objections he shall be deemed to have withdrawn his application.[L.N. 44/1970, r. 5, L.N. 42/1995, r. 11, L.N. 146/2003, r. 11.]

33. Conditions by Registrar

(1)If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate his willingness to the applicant in writing, and, if the applicant objects to the conditions, amendments, disclaimer, modifications or limitations, he shall within ninety days from the date of the communication apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application.

(2)If the applicant does not object to the conditions, amendments, disclaimer, modifications or limitations, he shall within thirty days from the date of receipt of the Registrar’s communication, notify the Registrar in writing, and alter his application accordingly.[L.N. 42/1995, r. 12, L.N. 146/2003, r. 12.]

34. Decision of Registrar

(1)The decision of the Registrar, at a hearing under rule 32 or rule 33, or without a hearing if the applicant has duly communicated his considered objections or considered reply, in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant objects to the decision he may within thirty days from the date of receipt of the decision, by applying in Form TM 4, require the Registrar to state in writing the grounds of, and the materials used by him in arriving at, his decision.

(2)In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues the statement in writing; and the date when the statement is sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of appeal.[L.N. 42/1995, r. 13, L.N. 146/2003, r. 13.]

35. Disclaimer

The Registrar may call on an applicant to insert in his application such disclaimer as the Registrar may think fit, in order that the public generally may understand what the applicant’s rights, if his mark is registered, will be.

Defensive Trade Marks

36. Application under section 30 of the Act

(1)An application to the Registrar for registration of a defensive trade mark under section 30 of the Act shall be in Form TM 2 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration made by the applicant or some other person approved for the purpose by the Registrar.

(2)The applicant may send with this declaration, or subsequently, such other evidence as he may desire to furnish, whether after request made by the Registrar or otherwise, and the Registrar shall consider the whole of the evidence before deciding on the application.

(3)In all other respects, and where they are appropriate and it is not otherwise stated, these Rules shall apply to such applications as they apply to applications for the registration of ordinary trade marks.[L.N. 146/2003, r. 14.]

Certification Trade Marks

37. Application under section 40 of the Act

An application to the Registrar for registration of a certification trade mark under section 40 of the Act shall be in Form TM 2.[L.N. 146/2003, r. 15.]

38. Authorisation to proceed

These Rules shall apply to applications under rule 37 as they apply to applications for the registration of ordinary trade marks, except that the applicant shall not be deemed to have abandoned his application if in the circumstances of rule 32 or rule 33 he does not apply for a hearing or reply in writing.

39. Case, draft regulations

(1)The applicant shall send to the Registrar, with his application or when required by the Registrar, a case setting out the grounds on which he relies in support of his application together with draft regulations for governing the use of the mark, all in duplicate.

(2)The Registrar may communicate to the applicant any observations he may have to make on the sufficiency of the case or the suitability of the draft regulations and the applicant may modify either of those documents.[L.N. 146/2003, r. 16.]

40. Regulations and application to be open to inspection

If the Registrar decides to accept the application the regulations for governing the use of the mark approved by the Registrar, as well as the form of application, shall be open to public inspection.

41. Registrar’s refusal

If the Registrar decides to refuse to accept the regulations or to accept the regulations subject to conditions, limitations, amendments or modifications, he shall inform the applicant of his objections in writing and shall, if required, hear the applicant.

Advertisement of Application

42. Advertisement of application

(1)An application for the registration of a trade mark shall be advertised in the Journal or Kenya Gazette in such manner as the Registrar may direct.

(1A)If an application that has been advertised under paragraph (1) is withdrawn, the withdrawal shall be advertised in the Journal or Kenya Gazette in such manner as the Registrar may direct.

(2)In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant, the words “By Consent” shall appear in the advertisement.

(3)If no representation of the trade mark is included in the advertisement of the application, the Registrar shall refer in the advertisement to the place or places where a specimen or representation of the trade mark is deposited for exhibition.[L.N. 44/1970, r. 6, L.N. 146/2003, r. 17.]

43. Representations or information from applicant

For the purpose of advertising a trade mark, the Registrar may, at the appropriate time, require the applicant to supply—

(a)up to ten printed representations of the trade mark satisfactory to the Registrar; or

(b)such other information or means of advertising the trade mark as the Registrar requires.

[L.N. 146/2003, r. 18.]

44. Advertising of series of trade marks

The following shall apply if the application relates to a series of trade marks differing from one another in respect of the particulars mentioned in section 24(3) of the Act—

(a)rule 43 shall apply with respect to each of the trade marks in the series; and

(b)the Registrar may, instead of advertising a representation of each of the trade marks in the series, include with the advertisement a statement describing how the trade marks differ from each other.

[L.N. 146/2003, r. 18.]

45. Advertisements under sections 21 (10) and 38 (2) and (4) of the Act

Advertisements under sections 21 (10) and section 38 (2) and (4) of the Act shall be made in the same manner as advertisements of applications for registration and rules 42 to 44 and rule 45A shall apply with necessary modifications.[L.N. 146/2003, r. 18.]

45A. Costs of advertisement

Before an advertisement relating to an application is published, the applicant shall pay the costs of the advertisement.[L.N. 44/1970, r. 7, L.N. 146/2003, r. 18.]

Opposition to Registration

46. Opposition

Any person may, within sixty days from the date of any advertisement in the Journal or Kenya Gazette of an application for registration of a trade mark, give notice in Form TM 6 to the Registrar of opposition to the registration.[L.N. 146/2003, r. 19.]

47. Notice of opposition

(1)The notice shall include a statement of the grounds upon which the opponent objects to the registration.

(2)If the registration is opposed on the ground that the mark resembles marks already on the register, the notice shall set out—

(a)the numbers of those other marks; and

(b)references to the Journals or Kenya Gazettes in which those other marks were advertised.

(3)The notice shall be accompanied by a duplicate, which the Registrar shall forthwith send to the applicant.[L.N. 146/2003, r. 20.]

48. Counter-statement

(1)Within forty-two days from the receipt of the duplicate the applicant shall send to the Registrar a counter-statement in Form TM 7 setting out the grounds on which he relies as supporting his application.

(2)The applicant shall also set out what facts, if any, alleged in the notice of opposition he admits.

(3)The counter-statement shall be accompanied by a duplicate.

(4)Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent.[L.N. 454/1959, r. 2, L.N. 146/2003, r. 21.]

49. Evidence in support of opposition

(1)Within forty-two days after the receipt of the duplicate counter-statement, the opponent shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his opposition.

(2)The statutory declaration shall be in duplicate.

(3)Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.[L.N. 454/1959, r. 2, L.N. 146/2003, r. 22.]

50. Evidence in support of application

(1)Within forty-two days after the receipt of the statutory declaration of the opponent under rule 49, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application.

(2)The statutory declaration shall be in duplicate.

(3)Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the opponent.[L.N. 454/1959, r. 2, L.N. 146/2003, r. 22.]

51. Evidence in reply by opponent

(1)Within thirty days after the receipt of the statutory declaration of the applicant under rule 50, the opponent may leave with the Registrar evidence, by way of statutory declaration, confined strictly to matters in reply.

(2)The statutory declaration shall be in duplicate.

(3)Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.[L.N. 454/1959, r. 3, L.N. 146/2003, r. 22.]

52. Further evidence

No further evidence shall be left on either side, but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

52A. Abandonment of application or opposition

If the applicant or opponent fails to furnish the required counter-statement or evidence in support within the times prescribed by rules 48 to 50, the application or opposition, as the case may be, shall be deemed to be abandoned and the Registrar may proceed to make an award of costs.[L.N. 44/1970, r. 8, L.N. 146/2003, r. 23.]

53. Exhibits

(1)Where there are exhibits to declarations filed in an opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the originals shall be left with the Registrar in order that they may be open to inspection.

(2)The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

54. Hearing

(1)Upon completion of the evidence, the Registrar shall give notice to the parties of a date when he will hear the arguments in the case.

(2)An appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice.

(3)Within seven days from the receipt of the notice any party who intends to appear shall so notify the Registrar in Form TM 8.

(4)A party who receives notice and who does not, within seven days from the receipt thereof, so notify the Registrar in Form TM 8, may be treated as not desiring to be heard and the Registrar may act accordingly.

55. [Deleted by L.N. 146/2003, r. 24.]

56. Security for costs

Where a party giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice neither resides nor carries on business in Kenya, the Registrar may require him to give security, in such form as the Registrar may deem sufficient, for the costs of the proceedings before the Registrar, for such amount as to the Registrar may seem fit, and at any stage in the opposition proceedings may require further security to be given at any time before his decision in the case.

57. Costs in uncontested case

In the event of an opposition being uncontested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.

58. [Deleted by L.N. 146/2003, r. 25.]

Non-Completion

59. Non-completion of registration

(1)Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar shall in Form TM 9A give notice in writing to the applicant at his trade or business address of the noncompletion, but if the applicant has authorized an agent for the purpose of the application he shall instead send the notice to the agent and shall send a duplicate thereof to the applicant.

(2)If after fourteen days from the date when the notice was sent, or such further time as the Registrar may allow, the registration is not completed, the application shall be deemed to be abandoned.

Entry in the Register, and Associated Marks

60. Entry in register

(1)As soon as may be after the expiration of sixty days from the date of the advertisement in the Journal or Kenya Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of subsection (1) of section 22 of the Act, and upon payment of the prescribed fee, enter the trade mark in the register.

(2)The entry of a trade mark in a register shall give the date of registration, the goods or services in respect of which it is registered together with the particulars of the trade, business, profession, occupation or other description of the proprietor, particulars of any undertakings of the proprietor entered on the form of application, particulars affecting the scope of the registration or the rights conferred by the registration, and such other particulars as are prescribed.

(3)In the case of an application which the Registrar accepts only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant for registration, the entry in the register shall state that it is “By Consent” and shall give the number of the previous registration or the application for registration.[L.N. 454/1959, r. 4, L.N. 42/1995, r. 14, L.N. 146/2003, r. 26.]

61. Notations indicating association no longer of any effect

A notation in the register included as a result of a trade mark having been associated with another trade mark under section 26 of the Act before that section was repealed is of no effect.[L.N. 146/2003, r. 27.]

62. Death of applicant before registration

In case of the death of any applicant for the registration of a trade mark after the date of his application and before the trade mark applied for has been entered in the register, the Registrar, after the expiration of the prescribed period of advertisement and the determination of any opposition to the application, may, on being satisfied of the applicant’s death, enter in the register, in place of the name of the deceased applicant, the name, address and description of the person owning the trade mark, on ownership being proved to the satisfaction of the Registrar.

63. Certificate of registration

Upon the registration of a trade mark the Registrar shall issue to the applicant a certificate in Form TM 10A, and shall affix thereto a copy of the mark.[L.N. 146/2003, r. 28.]

Renewal

64. Renewal of registration

(1)At any time not more than ninety days before the expiration of the last registration of a trade mark, any person may leave at the office a fee for the renewal of the registration of the mark in Form TM 10, and, if he is not the registered proprietor, shall sign a statement on the form that he is directed by the registered proprietor to pay the fee (if such be the case) and shall give his address.

(2)Before taking any further step, the Registrar may either—

(a)require the person leaving the fee to furnish within ten days an authority to pay the fee signed by the registered proprietor, and if he does not furnish that authority may return the fee and treat it as not received; or

(b)communicate with the registered proprietor stating that the fee has been received and that the registration will in due course be renewed.

[L.N. 146/2003, r. 29.]

65. Notice before removal of trade mark from register

At a date not less than thirty days and not more than sixty days before the expiration of the last registration of a mark, if no fee in Form TM 10 has been received, the Registrar shall notify the registered proprietor in writing of the approaching expiration.[L.N. 146/2003, r. 30.]

66. Second notice

At a time not less than fourteen days and not more than thirty days before the expiration of the last registration of a mark, the Registrar may, if no renewal fee has been received, send a notice in writing to the registered proprietor at his trade or business address as well as at his address for service, if any.[L.N. 146/2003, r. 31.]

67. Advertisement of non-payment

If at the date of the expiration of the last registration of a mark the renewal fee has not been paid, the Registrar shall advertise the fact forthwith in the Journal or Kenya Gazette, and, if within one month after that advertisement the renewal fee in Form TM 10, together with the additional prescribed late renewal fee, is received, he may renew the registration without removing the mark from the register.[L.N. 146/2003, r. 32.]

68. Removal of trade mark from register

If, at the expiration of thirty days after the advertisement under rule 67, the fees referred to in that rule have not been paid, the Registrar may remove the mark from the register as of the date of the expiration of the last registration, but he may, upon payment of the renewal fee in Form TM 10 together with the additional prescribed restoration fee, restore the mark to the register if satisfied that it is just to do so, and upon such conditions as he may think fit to impose.[L.N. 146/2003, r. 32.]

69. Record of removal of mark

Where a trade mark has been removed from the register, the Registrar shall cause to be entered in the register a record of the removal and of the cause thereof.

70. Notice and advertisement of renewal and restoration

Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Journal or Kenya Gazette.[L.N. 146/2003, r. 33.]

Assignments and Transmissions

71. Application for entry of assignment or transmission

A person who becomes entitled by assignment or transmission to a registered trade mark may apply, in Form TM 14, to the Registrar to register his title.[L.N. 146/2003, r. 34.]

72. [Deleted by L.N. 146/2003, r. 34.]

73. Particulars to be stated in application

(1)An application under rule 71 shall contain the name, trade or business address and description of the person claiming to be entitled and shall be accompanied by a copy of the instrument, if any, under which the person claims.

(2)The full names of all the partners in a partnership shall be given in the body of the application.

(3)The Registrar may in any case require and retain an attested copy of any instrument produced for inspection in proof of title, but that copy shall not be open to public inspection.[L.N. 146/2003, r. 35.]

74. Case accompanying application

If the person applying for registration of his title does not claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him; and if the Registrar so requires, the case shall be verified by a statutory declaration.[L.N. 146/2003, r. 36.]

75. Proof of title

The Registrar may call on any person who applies to be registered as proprietor of a registered trade mark for such proof or additional proof of title as he may require for his satisfaction.

76. Application for entry of assignment without goodwill

(1)An application under rule 71 or rule 72 relating to an assignment on or after the appointed day, of a trade mark in respect of any goods and services shall state—

(a)whether the trade mark was, at the time of the assignment, used in a business in any of those goods or services, as the case may be; and

(b)whether the assignment was made otherwise than in connection with the goodwill of that business,

and, if both those circumstances subsisted, then the applicant shall leave with the Registrar a copy of the Registrar's directions to advertise the assignment, obtained upon application under section 25 (7) and rule 80, and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled; and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.

(2)For the purposes of section 32 (4), the period within which a corporation may be registered as the subsequent proprietor of a registered trade mark, upon application made under rule 71 or rule 72, shall be six months from the date of advertisement in the Gazette of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow, on application being made to him on Form TM 13 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.[L.N. 42/1995, r. 15.]

76. Application for entry of assignment without goodwill

(1)An application under rule 71 relating to an assignment on or after the appointed day of a trade mark in respect of any goods or services shall state—

(a)whether the trade mark was, at the time of the assignment, used in a business in any of those goods or services, as the case may be; and

(b)whether the assignment was made otherwise than in connexion with the goodwill of that business,

and, if both those circumstances subsisted, the applicant shall leave with the Registrar a copy of the Registrar’s directions to advertise the assignment, obtained upon application under subsection (7) of section 25 of the Act and rule 80 of these Rules, and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled; and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.

(2)For the purposes of section 32(4) of the Act, the period within which a corporation may be registered as the subsequent proprietor shall be six months after the date of advertisement of the registration in the Journal or Kenya Gazette.[L.N. 42/1995, r. 15, L.N. 146/2003, r. 37.]

77. Entry in register

When the Registrar is satisfied as to the title of the person claiming to be registered, he shall cause him to be registered as proprietor of the trade mark in respect of the relevant goods or services, and shall enter in the register his name, trade or business address and description and particulars of the assignment or transmission.[L.N. 42/1995, r. 16.]

78. Separate registrations

Where, pursuant to an application under rule 71, and as the result of a division and separation of the goods or services of a registration or a division and separation of places or markets, different persons become registered separately under the same official number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.[L.N. 42/1995, r. 17, L.N. 146/2003, r. 38.]

79. Registrar’s certificate of approval as to certain assignments and transmissions

(1)Any person who desires to obtain the Registrar’s certificate under subsection (5), or his notification of approval under subsection (6), of section 25 of the Act shall send to the Registrar, with his application in Form TM 39 or 40, as the case may be, a statement of case in duplicate setting out the circumstances, and a copy of any instrument or proposed instrument effecting the assignment or transmission.

(2)The Registrar may call for any evidence or further information that he may consider necessary, and the statement of case shall be amended if required to include all the relevant circumstances, and shall if required be verified by a statutory declaration.

(3)The Registrar, after hearing if so required the applicant and any other person whom the Registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be.

(4)Where a statement of case is amended, two fair copies thereof in its final form shall be left with the Registrar.

(5)The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.[L.N. 146/2003, r. 39.]

80. Registrar’s directions for advertisement of assignment without goodwill of trade mark in use

(1)An application to the Registrar under subsection (7) of section 25 of the Act shall be made by the assignee in Form TM 41, and shall state the date on which the assignment was made.

(2)The application shall give particulars of the registration in the case of a registered trade mark, and, in the case of an unregistered trade mark, shall show the mark and give particulars of the registered trade mark that has been assigned therewith in accordance with subsection (3) of section 25.

(3)The Registrar may call for any evidence or further information, and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.

(4)The Registrar may refuse to consider such an application in a case to which subsection (6) of section 25 applies unless his approval has been obtained under the said subsection and a reference identifying the Registrar’s notification of approval is included in the application.

(5)Deleted by L.N. 146/2003, r. 40.[L.N. 146/2003, r. 40.]

Alteration of Address

81. Alteration of address in register

(1)A registered proprietor or registered user of a trade mark whose trade or business address is changed so that the entry in the register is rendered incorrect shall forthwith request the Registrar in Form TM 17 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.

(2)A registered proprietor or registered user of a trade mark whose address for service in Kenya entered in the register is changed, whether by discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect, shall forthwith request the Registrar in Form TM 32 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.

(3)A registered proprietor or registered user of a trade mark whose registered trade or business address or address for service is altered by a public authority, so that the changed address designates the same premises as before, may make the request to the Registrar, but in that case no fee shall be payable, and if he does so he shall leave therewith a certificate of the alteration given by the authority; and if the Registrar is satisfied as to the facts of the case he shall alter the register accordingly.

(4)In the case of the alteration of the address of person entered in the register as the address for service of more than one registered proprietor or registered user of trade marks, the register may, on proof that the address is the address of the applicant and if satisfied that it is just to do so, accept an application from that person in Form TM 32 amended so as to suit the case for the appropriate alteration of the entries of his address as the address for service in the several registrations, particulars of which shall be given in the form, and may alter the entries accordingly.

(5)All applications under this rule in Form TM 32 shall be signed by the registered proprietor or the registered user, as the case may be, or by an agent, expressly authorized by him for the purpose of such an application, unless in exceptional circumstances the Registrar otherwise allows.

Applications to the Registrar for Rectification (Sections 29, 30, 35 and 36)

82. Application to rectify or remove a trade mark from the register

(1)An application to the Registrar under any of the sections 29, 30, 35 and 36 of the Act for the making, expunging or varying of any entry in the register shall be made in Form TM 25 and shall be accompanied by a statement setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks.

(2)The application shall be accompanied by a copy of the application and a copy of the statement and the Registrar shall forthwith transmit the copies to the registered proprietor.[L.N. 146/2003, r. 41.]

83. Further procedure

Rules 48 to 57 shall apply with respect to the further proceedings relating to an application in Form TM 25, with necessary modifications and with the following specific modifications—

(a)references to the applicant shall be deemed to be references to the registered proprietor and references to the opponent shall be deemed to be references to the person making the application under rule 25;

(b)the Registrar shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement.

[L.N. 146/2003, r. 42.]

84. Intervention by third parties

(1)Any person other than the registered proprietor alleging interest in a registered trade mark in respect of which an application is made in Form TM 25, may apply to the Registrar in Form TM 26 for leave to intervene, stating thereon the nature of his interest, and the Registrar may refuse or grant leave, after hearing (if so required) the parties concerned, upon such conditions and terms as he may deem fit.

(2)Before dealing in any way with the application for leave to intervene the Registrar may require the applicant to give an undertaking to pay such costs as in the circumstances he may award to any party.

Surrender of a Registered Trade Mark

84A. Application to surrender

(1)An application to surrender a registered trade mark under section 36A(1) of the Act shall be made to the Registrar—

(a)in Form TM 21, if the surrender is for all of the goods or services in respect of which the trade mark is registered; or

(b)in Form TM 22, if the surrender is for some of the goods or services in respect of which the trade mark is registered.

(2)An application under paragraph (1) shall—

(a)set out the name and address of each person who has a registered interest in the trade mark; and

(b)include a certification by the proprietor that each person referred to in subparagraph (a) either—

(i)has been given notice of the proposed surrender at least ninety days before the application is made; or

(ii)is not affected by the surrender or has consented to it.

(3)After making the appropriate entries in the register, the Registrar shall publish a notice of the surrender in the Journal or Kenya Gazette.[L.N. 146/2003, r. 43.]

Applications for Alteration of the Register by Correction, Change, Cancellation or Striking out Goods or for Entry of Disclaimer, Memorandum or Note (Section 37(1))

85. Application under section 37(1)

(1)An application to the Registrar under subsection (1) of section 37 of the Act for the alteration of the register by correction or change, or for the entry of a disclaimer or memorandum, may be made by the registered proprietor of the trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of the registered proprietor.

(2)An application under paragraphs (a), (b) or (e) of section 37(1) of the Act shall be in Form TM 17, TM 19, TM 20, TM 23 or TM 32, as may be appropriate.

(3)An application under paragraph (c) or (d) of section 37(1) of the Act shall be made in accordance with rule 84A.

(4)For greater certainty, Form TM 20 may be used to change the name of the registered proprietor if the registered proprietor merges with another corporation and the corporation resulting from the merger has a different name.[L.N. 42/1995, r. 18, L.N. 146/2003, r. 44.]

86. Evidence

In the case of an application as in rule 85, the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.

87. Advertisement of certain applications

Where application is made in Form TM 23 to enter a disclaimer or memorandum relating to a trade mark, the Registrar, before deciding upon such application, shall advertise the application in the Journal or Kenya Gazette in order to enable any person desiring so to do to state, within thirty days of the advertisement, any reasons in writing against the making of the entry of the disclaimer or memorandum.[L.N. 146/2003, r. 45.]

88. Certificates of validity to be noted

Where the court has certified under section 47 of the Act with regard to the validity of a registered trade mark, the registered proprietor thereof may request the Registrar in Form TM 47 to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, which shall be named in the form; an office copy of the certificate shall be sent with the request, and the Registrar shall so note the register and publish the note in the Journal or Kenya Gazette.[L.N. 146/2003, r. 46.]

Applications to Alter Registered Trade Marks

89. Alteration of registered mark

Where a person desires to apply under section 38 of the Act that his registered trade mark may be added to or altered, he shall make his application in writing in Form TM 24.[L.N. 146/2003, r. 47.]

90. Advertisement before decision

(1)The Registrar shall consider the application and shall, if it appears to him to be expedient, advertise the application in accordance with rule 45 and rules 43, 44 and 45A shall apply with necessary modifications.

(2)Any person may, within thirty days after the date of the advertisement of the application, give notice in Form TM 6 to the Registrar of opposition to the application and rules 47 to 57 shall apply with necessary modifications.

(3)The Registrar shall send the duplicate notice, and the duplicate of any further statement of objections, to the applicant, and the provisions of rules 48 to 57 shall apply mutatis mutandis to the further proceedings thereon; and in any case of doubt any party may apply to the Registrar for directions.[L.N. 146/2003, r. 48.]

91. Decision of Registrar

If the Registrar decides to allow the application he shall add to or alter the mark in the register, and if the mark so added to or altered has not been advertised under rule 90 he shall advertise it in the Journal or Kenya Gazette, and in any case shall insert in the Journal or Kenya Gazette a notification that the mark has been altered.[L.N. 146/2003, r. 49.]

92. Advertisement

If the Registrar is of the opinion that an advertisement describing the addition or alteration to the trade mark would not likely be understood by persons interested in the matter, the Registrar may make a requirement under rule 43.[L.N. 146/2003, r. 50.]

Court Orders for Rectification of Certification Trade Mark Entries and Regulations

93. Rectification of certification trade mark entries by the court

An application on any of the grounds mentioned in paragraph 4 of the First Schedule to the Act, made by an aggrieved person to the court for an order expunging or varying an entry in the register of or relating to a certification trade mark, or varying the relevant deposited regulations, shall be made in Form TM 35 and shall include full particulars of the grounds on which the application is made.

Alteration of Certification Trade Mark Regulations

94. Alteration of regulations

(1)An application by the registered proprietor of a certification trade mark for an alteration of the deposited regulations shall be made in Form TM 34.

(2)Where the Registrar causes such an application to be advertised, the time within which any person may give notice to the Registrar of opposition to the application shall be thirty days from the date of the advertisement.[L.N. 146/2003, r. 51.]

Collective Trade Marks

94A. Application for registration

(1)An application to the Registrar for registration of a collective trade mark under section 40A (1) of the Act shall be in Form TM 2.

(2)These Rules shall apply, with necessary modifications, to an application for registration of a collective trade mark as they apply to an application for an ordinary trade mark.[L.N. 146/2003, r. 52.]

Registered Users

95. Application for entry of registered user

An application to the Registrar for the registration under section 31 of the Act of a person as a registered user of a registered trade mark shall be made by that person and the registered proprietor in Form TM 48.

96. Entry and notification

(1)The entry of a registered user in the register shall state the date on which it was made; and in addition to the trade or business address of the registered user it may include an address for service, if an application by him in Form TM 32 therefor has been approved.

(2)A notification in writing of the registration of a registered user shall be sent to the registered proprietor of the trade mark, to the registered user and to every other registered user whose name is entered in relation to the same registration of a trade mark, and shall be inserted in the Journal or Kenya Gazette.[L.N. 146/2003, r. 53.]

97. Registered proprietor’s application to vary entry

An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under paragraph (a) of subsection (8) of section 31 of the Act shall be made on Form TM 49, and shall be accompanied by a statement of the grounds on which it is made and, where the registered user in question consents, by the written consent of that registered user.

98. Application by registered proprietor or user to cancel entry

An application by the registered proprietor or any registered user of a trade mark for the cancellation of the registration of a registered user of that trade mark under paragraph (b) of subsection (8) of section 31 of the Act shall be made in Form TM 50, and shall be accompanied by a statement of the grounds on which it is made.

99. Application by any person to cancel entry

An application by any person for the cancellation of the registration of a registered user under paragraph (c) of subsection (8) of section 31 of the Act shall be made in Form TM 51, and shall be accompanied by a statement of the grounds on which it is made.

100. Notification and hearing

(1)The Registrar shall notify in writing applications under rules 97, 98 and 99 to the registered proprietor and each registered user (not being the applicant) under the registration of the trade mark.

(2)Any person so notified who intends to intervene in the proceedings shall, within thirty days of the receipt of the notification, give notice to the Registrar in Form TM 52 to that effect, and shall send therewith a statement of the grounds of his intervention; and the Registrar shall thereupon send copies of such notice and statement to the other parties, so that the intervention may be known to the applicant, the registered proprietor, the registered user whose registration is in suit and any other registered user who intervenes.

(3)Any such party may, within such time or times as the Registrar may appoint, leave evidence in support of his case, and the Registrar, after giving the parties an opportunity of being heard, may accept or refuse the application or accept it subject to any conditions, amendments, modifications or limitations as he may think right to impose.[L.N. 146/2003, r. 54.]

101. Registered user’s application to correct error or enter change

(1)Applications under subsection (2) of section 37 of the Act shall be made in Form TM 17, TM 19, TM 20 or TM 32, as may be appropriate, by a registered user of a trade mark, or by such person as may satisfy the Registrar that he is entitled to act in the name of a registered user; and the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.

(1A)For greater certainty, Form TM 20 may be used to apply to change the name of a registered user if the registered user merges with another corporation and the corporation resulting from the merger has a different name.

(2)In case of the registration of a registered user for a period, in accordance with paragraph (d) of subsection (4) of section 31 of the Act, the Registrar shall cancel the entry of the registered user at the end of the period.

(3)Where some or all of the goods or services are struck out from those in respect of which a trade ark is registered, the Registrar shall at the same time strike them out from those specifications of registered users of the trade mark in which they are comprised.

(4)The Registrar shall notify every cancellation or striking out under this rule to the registered users whose permitted use is affected thereby and the registered proprietor of the trade mark.[L.N. 41/1995, r. 19, L.N. 146/2003, r. 55.]

Extension of Time

102. Extension of time

(1)The Registrar may extend, on such conditions as he may specify, the time for doing any act or taking any proceedings under these Rules.

(2)The Registrar may not extend a time expressly provided in the Act, other than the period prescribed under subsection (6) or (7) of section 25 of the Act.

(3)A time limit may not be extended for a period exceeding ninety days, except for a time period prescribed by rule 76 which may be extended for a period not exceeding six months.

(4)An application to the Registrar for an extension of time under paragraph (1) shall be in Form TM 53 and shall be filed with the Registrar.

(5)The application shall state the grounds on which the application is based.

(6)An application for an extension of time may be made even though the time has already expired.

(7)The application shall be dealt with upon such notice, and in accordance with such procedures, as the Registrar may direct.[L.N. 146/2003, r. 56.]

Discretionary Power

103. Hearing

Before exercising adversely to any person any discretionary power given to the Registrar by the Act or these Rules, the Registrar shall, if so required, hear that person thereon.

104. Application for hearing

An application for a hearing shall be made within thirty days from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power.[L.N. 146/2003, r. 57.]

105. Notice of hearing

(1)Upon receiving such application, the Registrar shall give the person applying fourteen days’ notice of a time when he may be heard.

(2)Within seven days from the date when the notice would be delivered in the ordinary course of post, the person applying shall notify the Registrar whether or not he intends to be heard on the matter, and if he intends to appear he shall file Form TM 8 and pay the prescribed fee thereon.[L.N. 44/1970, r. 9.]

106. Notification of decision

The decision of the Registrar in the exercise of any such discretionary power shall be notified to the person affected.

Power to Dispense with Evidence

107. Dispensing with evidence

Where under these Rules a person is required to do any act or thing, or to sign any document, or to make any declaration on behalf of himself or of any body corporate, or any document or evidence is required to be produced to or left with the Registrar, or at the office, and it is shown to the satisfaction of the Registrar that from any reasonable cause that person is unable to do the act or thing, or to sign the document, or to make the declaration, or that the document or evidence cannot be produced or left, the Registrar may, upon the production of such other evidence, and subject to such terms as he may think fit, dispense with any such act or thing, signature, declaration, document or evidence.

Amendments

108. Amendments of documents

(1)Any document or drawing or other representation of a trade mark may be amended, and any irregularity in procedure which in the opinion of the Registrar may be excused without detriment to the interests of any person may be corrected, if the Registrar thinks fit, and on such terms as he may direct.

(2)An application under paragraph (1) to amend a document or drawing or other representation shall be in Form TM 19.[L.N. 146/2003, r. 58.]

Certificates

109. Certificates by Registrar

(1)The Registrar may give a certificate, other than a certificate under section 22 of the Act, as to any entry, matter or thing which he is authorized or required by the Act or these Rules to make or do, upon receipt of a request therefor in Form TM 30 from any person who, if the Registrar thinks fit so to require, can show an interest in the entry, matter or thing to his satisfaction.

(2)Except in a case falling under rule 111, the Registrar shall not be obliged to include in the certificate a copy of any mark, unless he is furnished by the applicant with a copy thereof suitable for the purpose.

110. Marks registered without limitation of colour

Where a mark is registered without limitation of colour, the Registrar may grant a certificate of its registration for the purpose of obtaining registration abroad either in the colour in which it appears upon the register or in any other colour or colours.

111. Certificates for use in obtaining registration abroad

(1)Where a certificate of registration of a trade mark is issued for use in obtaining registration abroad, the Registrar shall include in the certificate a copy of the mark, and may require the applicant for the certificate to furnish him with a copy of the mark suitable for the purpose, and if the applicant fails to do so may refuse to issue the certificate.

(2)The Registrar may state in the certificate such particulars concerning the registration of the mark as to him seem fit, and may omit therefrom reference to any disclaimers appearing in the register; but in the last-mentioned case the certificate shall be marked “For use in obtaining registration abroad only”.

Declarations

112. Person before whom declaration is to be taken

The statutory declarations required by the Act and these Rules, or used in any proceedings thereunder, shall be made and subscribed as follows—

(a)if made in the Commonwealth, before any court, judge or justice of the peace, or any officer authorized by law to administer an oath for the purpose of a legal proceeding;

(b)if made outside the Commonwealth, before a Kenya Consul or Vice-Consul, or other person exercising the functions of a Kenya Consul, or a notary public, or before a judge or magistrate.

113. Presumption as to seal of officer taking declaration

Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized by rule 112 to take a declaration in testimony that the declaration was made and subscribed before him may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.

Search

114. Searches

(1)Any person may request the Registrar to cause a search to be made in respect of specified goods and services to ascertain whether any mark is on record that resembles a trade mark provided by the person.

(1A)An application under paragraph (1) shall be in Form TM 27 and shall be accompanied by duplicate representations of the trade mark.

(2)The Registrar shall cause such a search to be made and the person making the request to be informed of the result thereof.[L.N. 42/1995, r. 20, L.N. 146/2003, r. 59.]

Copies

115. Copies of documents

A person who wishes to obtain a copy of a document kept by the Registrar shall use Form TM 54.[L.N. 42/1995, r. 21, L.N. 146/2003, r. 60.]

116. [Deleted by L.N. 146/2003, r. 61.]

Appeals to the court

117. Appeal to court

When a person intends to appeal to the court, the appeal shall be made by motion in the usual way, and no such appeal shall be entertained unless notice of motion is given within sixty days from the date of the decision appealed against or within such further time as the Registrar shall allow.

Applications to and Orders of the court

118. Applications to court

Every application to the court under the Act shall be served on the Registrar.

119. Order of court

(1)Where an order has been made by the court in any case under the Act, the person in whose favour the order has been made, or such one of them if more than one, as the Registrar may direct, shall forthwith leave at the office an office copy of the order, together with Form TM 46, duly completed, if required.

(2)The register may, if necessary, thereupon be rectified or altered by the Registrar.

120. Publication of order of court

Whenever an order is made by the court under the Act, the Registrar may, if he thinks that the order should be made public, publish it in the Journal or Kenya Gazette.[L.N. 146/2003, r. 62.]

Submission of Documents in Electronic Form

121. Submission of electronic documents

A document submitted to the Registrar in electronic form shall be deemed to have been submitted in accordance with these Rules on the day the electronic form is submitted if, within thirty days after that submission, the document is submitted to the Registrar in paper form in accordance with these Rules together with any applicable fee required under these Rules.[L.N. 146/2003, r. 63.]

FIRST SCHEDULE [r. 3]

FEES

[L.N. 454/1959, r. 5, L.N. 44/1970, r. 10, L.N. 138/1971, r. 2, L.N. 131/1975, r. 2, L.N. 249/1988, r. 2, L.N. 50/1991, r. 2, L.N. 146/2003, r. 64.]Notes—

1.A foreign fee is payable if the person paying the fee or on whose behalf the fee is being paid does not reside in Kenya and does not have a principal place of business in Kenya.

2.A series of trade marks under section 24(3) of the Act shall be deemed to be a single trade mark for the purpose of calculating fees, except where otherwise indicated.

	Description of fee	LocalFeeKSh.	ForeignFeeUS $	CorrespondingForm
	REGISTRATION OF TRADE MARKS
1.	Application fee for an application to register a trade mark			TM 2
	for the first class	4,000	200
	for each subsequent class	3,000	150
2.	Fee for filing a notice of opposition to an application to register a trade mark			TM 6
	for the first class	5,000	250
	for each subsequent class	4,000	200
3.	Fee for filing a counter-statement			TM 7
	for the first class	4,000	200
	for each subsequent class	3,000	150
4.	Fee for registration of a trade mark under rule 60(1)
	for the first class	2,000	150
	for each subsequent class	1,500	100
	ADDITION OF GOODS OR SERVICES
5	Application fee for an application, under rule 29A, to add goods or services with respect to a registered trade mark or application register a trade mark, for each class	3,000	150	TM 55
	RENEWAL
6.	Fee for renewal of a registration of trade mark under rule 64(1), 67 or 68			TM 6
	for the first class	4,000	250	TM 10
	for each subsequent class	3,000	200
7.	Additional fee, under rule 67, for renewal within thirty days after advertisement of non- renewal	3,000	150
8.	Restoration fee, under rule 68, for restoration of registration after removal from register	5,000	250
	ASSIGNMENT OF TRADE MARKS
9.	Application fee for an application, under rule 71, to register an assignment or transmission, for each trade mark assigned or transmitted			TM 14
	for the first class	3,000	150
	for each subsequent class	2.,000	100
10.	Application fee for an application, under rule 79(1), for a certificate under section 25(5) of the Act relating to the validity of a proposed assignment, for each trade mark	3,000	150	TM 39
	for the first class	3,000	150
	for each subsequent class	2.,000	100
11.	Application fee for an application, under rule 79(1), for approval under section 25(6) of the Act of a proposed assignment or transmission			TM 40
	for each trade mark to which the proposed assignment or transmission would relate	500	50
12.	Application fee for an application, under rule 80(1), for directions under section 25(7) of the Act with respect to the advertisement of an assignment, for each trade mark
	for the first class	6,000	300	TM 41
	for each subsequent class	5,000	250
	REGISTERED
13.	Application fee for an application, under rule 95, to register a person as a registered user of a registered trade mark, for each trade mark
	for the first class	6,000	300	TM 48
	for each subsequent class	5,000	250
14.	Application fee for an application, under rule 97, to vary the registration of a person as a registered user of a registered trade mark under section 31(8)(a) of the Act, for each trade mark
	for the first class	5,000	250	TM 49
	for each subsequent class	4,000	200
15.	Application fee for an application, under rule 98, to cancel the registration of a person as registered user of a registered trade mark under section 31(8)(b) of the Act, for each trade mark
	for the first class	5,000	250	TM 50
	for each subsequent class	4,000	200

16.	Application fee for an application, under rule 99, to cancel the registration of a person as a registered user of a registered trade mark under section 31(8)(c) of the Act, for each trade mark
	for the first class	5,000	250	TM 51
	for each subsequent class	4,000	200
17.	Fee for filing, under rule 100(2), a notice of intention to intervene in proceedings relating to an application under section section 31(8) of the Act	3,000	150	TM 52
	CONVERSION OF OLD CLASSIFICATIONS
18.	Application fee for an application, under rule 7(2), to adapt the classification of goods and services in respect of which a trade mark is registered	1,000	50	TM 43
19.	Fee for filing a notice of opposition, under rule 7(6), to an application, under rule 7(2), to adapt a classification	5,000	250	TM 44
	RECTIFICATION AND CORRECTION OF THE REGISTERED
20.	Application fee for an application, under rule 81(1), 85(2) or 101(2) , to alter the trade or business address of the proprietor or a registered user, for each			TM 17
	for the first class	2,000	100
	for each subsequent class	1.,000	50
21.	Application fee for an application, under rule 13(2), 81(2), 85(2) or 101(2), to enter or change an address for service	no fee	no fee	TM 32
22.	Application fee for an application, under rule 82(1) and section 29. 30, 35, or 36 of the Act, for the making, expunging or varying of an entry in the register, for each trade mark
	for the first class	6,000	300	TM 25
	for each subsequent class	5.,000	250
23.	Fee for filing an application for leave to intervene, under rule 84(1), in relation to an application under rule 82(1), and section 29,30, 35 or 36 of the Act	3,000	150	TM 26
24.	Application fee for an application, under rule 84A(1), to surrender a trade mark
	for all goods and services	1,000	50	TM 21
	for some goods and services	1.,000	50	TM 22
25.	Application fee for an application, under rule 85(2) or 101(2), to make a correction to the register for which a fee is not otherwise specified, for each trade mark
	for the first class	2,000	100	TM 19
	for each subsequent class	1.,000	50
26.	Application fee for an application, under rule 85(2) or10(2), to change the name or description of the proprietor or a registereduser			TM 20

	for the first mark	3,000	150
	for each additionaltrade mark	500	50
27.	Application fee for an application, under rule 85(2), to enter a desclaimer or memorandum under section 37(1)(e) of the Act	500	20	TM 23
28.	Fee for request, under rule 88, to add, to theregister, a note that a certificate of validity has been granted			TM 47
	for the first registration certified	1,000	50
	for each additional registration certified in the same certificate	500	50
29.	Application fee for an application, under rule 89, for leave to add to or alter a trade mark under section 38 of the Act, for each trade mark			TM 24
	for the first class	4,000	200
	for each subsequent class	3,000	150
30.	Fee for a notice of opposition, under rule 90(2), to an application, under rule 89, to add to or alter a trade mark	5,000	250	TM 6
31.	Application fee for an application to the court, under rule 93, relating to a certification trade mark	6,000	300	TM 35
32.	Fee for a notice, under rule 119(1), of a court, order relating to alteration or rectification of register	1,000	50	TM 46
	HEARING AND DECISIONS
33.	Fee for fling a notice of intention to appear at ahearing, for each trade mark
	for the first class	4,000	200	TM 8
	for each subsequent class	3,000	150
34.	Fee for filing a notice of intention to appear at a hearing, for each trade mark	4,000	200	TM 4
	COSTS
35.	On filing a bill of costs for taxation, for every ten pages or part thereof	2,000	100
36.	On issue of a notice of taxation	1,000	50
37.	On application for service of a notice of taxation together with a bill of costs	1,000	50
38.	On application for a certificate of taxation	1,000	50
	MISCELLANEOUS
39.	Fee for appointing an agent, under rule 14(2), to act in a proceeding or matter before or affecting the Registrar	1,000	50	TM 1
40.	Fee for preliminary advice of Registrar under rule 20(1)			TM 27
	for the first class	3,000	150
	For each subsequent class	2,000	100
41.	Fee for making a request under rule 109(1) for a certificate (other than a certificate of registration under section 22 of the Act)			TM 30
	for the first class	3,000	150
	For each subsequent class	2,000	100
42.	Application fee for an application, under rule 94(1), for alteration of deposited regulations relating to a certification trade mark —	500	20	TM 23
	(a) for the alternation of the regulations relating to one certification trade mark	3,000	150
	(b) for the alteration of identical or substantially identical regulations relating to another certification trade mark, for each such additional certification trade mark	500	50
43.	Application fee for an application, under rule 102, for an extension of time, other than an extension of time prescribed by rule 76—			TM 53
	(a) extension not exceeding 30 days	1,000	50
	(b) extension exceeding 30 days but not exceeding 60 days	2,000	100
	(c) extension exceeding 60 days	3,000	150
44.	Application fee for an application, under rule 102, for an extension of time prescribed by rule 76 -			TM 53
	(a) extension not exceeding two months	1,000	50
	(b) extension exceeding two months but not exceeding four months	2,000	100
	(c) extension exceeding four months	3,000	150
45.	Application fee for an application, under rule 108, to amend a document or drawing or drawing or other representation, for each trade mark			TM 19
	for the first class	2,000	100
	for each sebsequent class	1,000	50
46.	Fee for search under rule 114	6,000	300	TM 27
	for the first class	2,000	100
	for each sebsequent class	1,000	50
47.	Fee for inspecting the register or any notice, opposition, or decision relating to an application to rectify the register, for each quarter hour	200	10
48.	Fee to search among the representations of trade marks, for each quarter hour or part thereof	1,000	10	TM 8
49.	Fee for copies			TM 54
	For judgements, orders or other documents used in proceedings before the Registrar, per page	20	1
	for documents, per documents	500	10
	additional fee for certification, per document	1,000	50

SECOND SCHEDULE

FEES

Deleted

THIRD SCHEDULE

Deleted by L.N. 146/2003, r. 65.

FOURTH SCHEDULE [r. 4]

FORMS

[L.N. 44/1970, r. 11, L.N. 146/2003, r. 66.]

FORM TM 1		(r. 14(2))
APPOINTMENT OF AN AGENT [L.N. 146/2003. r. 66.]

Name and address of personappointing agent
Name and address of agent
Matter in respect of which agent is appointed

I, the person identified above, have appointed the above agent to act on my behalf in the matter described above, and request that all communications relating thereto be sent to the agent at his/their address given above.I revoke all previous authrisations in respect of the same matter.Dated ......................................................... at ...................................

Signature .......................................

__________________

FORM TM 2		(rr. 21(1), 36(1) and 94A(1))
[L.N. 146/2003. r. 66.]
APPLICATION FOR REGISTRATION OF A TRADE MARK

1.Trade Mark

Note: One representation of the trade mark must be set out in the above box.

2.Appliication is hereby made for registration of the above trade mark as (check one):☐ a trade mark other than a trade mark listed below☐ a certification trade mark☐ a defensive trade mark (if a defensive trade mark is applied for a statement of case and statutory declaration as required under r. 36(1) must accompany this application)☐ a collective trade mark (if a collective trade mark is applied for a copy of the rules governing the use of the trade mark must accompany this application)

3.*


Class		Goods/Services

4.Additional information, if any* ..........................................

5.Proposed proprietorName: .......................................................................................Trade or business address: ..................................................................Trading style (if any): .....................................................................*Applicant may use separate sheet where necessaryDate: ..........................................Signature: ..........................................To: The Registrar of Trade Marks.

__________________

FORM TM 3[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 4

REQUEST FOR STATEMENT OF GROUNDS OF DECISION

In the matter of (a) ....................................................................The Registrar is hereby requested to state in writing the grounds of his decision, dated the ............. day of .................., 20 ............., and the materials used by him in arriving at the decision.Dated this ........... day of ................, 20 ............

(b)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.If the Registrar has made any requirement to which the Applicant does not object, the Applicant shall comply therewith before the Registrar issues the ground of his decision. (See rule 34.)

(a)Here insert words and number identifying the matter or proceeding.

(b)Signature.

_______________

FORM TM 5[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 6		(rr. 46 and 90(2))
[L.N. 146/2003. r. 66.]
NOTICE OF OPPOSITION TO APPLICATION

In the matter of the following application:Application Number: .........................................................................Applicant: ..............................................................................................................................................................................................................................................................................Name and address of objector: ................................................................Address for service of objector: .......................................................................................................................................................................................................................................................................................................................................................I, the objector named above, give notice that I oppose the above application.The following is a statement of the grounds upon which i object:.......................................................................................................................................................................................................................................................................................................................................................................................Date: ..........................................Signature: ...............................To: The Registrar of Trade Marks.Note: This notice must be filed in duplicate.

_______________

FORM TM 7


FORM OF COUNTER-STATEMENT

(To be submitted in duplicate)

In the matter of an Opposition No. .......................... to Application No. ..............................I[We] ......................................................... the applicant(s) for registration of the above trade mark, hereby give notice that the following are the grounds on which I (we) rely as supporting my [our] application:............................................................................................I [We] admit the following allegations in the notice of Opposition:.............................................................................................Address for service in Kenya in these proceedings: .......................................................................................................................................Dated this ....................................... day of .................., 20 .........


		(a)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Signature.

_______________

FORM TM 8

NOTICE TO THE REGISTRAR OF ATTENDANCE AT HEARING

I [We]

(a)............................... of ................. hereby give notice that the hearing of the arguments in the case of:

(b)(1) Opposition No. ..................... to application for registration of a trade mark No. ..........................

(2)Application that the entry in the register in respect of trade mark No. .................. may be removed.

(3)................... may be amended by alteration of or addition to the trade mark.

(4)..................... may be amended by a conversion of the specification of goods.

(5)................... may be amended otherwise than by any change in the mark or of the specification on conversion, which, by the Registrar's notice to me [us] dated the .................. day of ................, 20 ..............,is fixed for........a.m or p.m. at the Registrar's office on the............day of......,20......., will be attended by me [us] or by some person on my [our] behalf.

Dated this .................. day of ................, 20 ..........

		(c) ...................................
		(d) ..................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Here insert name and address.

(b)Strike out words here that are not applicable, so as to state ONE of the cases (1) to (5) only.

(c)Signature.

(d)Address.

_______________

FORM TM 9[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 9A

NOTICE OF NON-COMPLETION OF REGISTRATION

No. .............................The Registrar, as required by section 22(3) of the Trade Marks Act and rule 59 of the Trade Marks Rules (copies of which are printed on the back hereof), has to point out that the registration of the trade mark, in respect of which your application numbered as above was made on the .............. day of ..................., 20 ............., has not been completed by reason of your default.Unless it is completed within fourteen days from this date the application will be treated as abandoned.Dated this ....................................... day of ................, 20 ........To: ..............................................................................................The Office of the Registrar of Trade Marks,P.O. Box 30031,Nairobi.

		[P.T.O]
[Back]

Section 22(3)Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.Rule 59

(1)Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar shall in Form TM 9A give notice in writing to the applicant at his trade or business address of the non-completion, but if the applicant has authorized an agent for the purpose of the application he shall instead send the notice to the agent and shall send a duplicate thereof to the applicant.

(2)If after fourteen days from the date when the notice was sent, or such further time as the Registrar may allow, the registration is not completed, the application shall be deemed to be abandoned.

_______________

FORM TM 10		(rr. 64(1), 65, 67 and 68)
[L.N. 146/2003. r. 66.]
RENEWAL OF REGISTRATION OF TRADE MARK

Name and address of person leaving the registration fee:...................................................................................................................................................................................................................................................................................I, the person described above, leave the prescribed registration fee for the renewal of the following trade mark:Trade Mark No. .............................................................................Registered proprietor: ...................................................................................................................................................................I am (check one)☐ the registered proprietor of the trade mark☐ not the registered proprietor of the trade mark but have been directed by the registered proprietor to pay the feeThe notice of renewal should be sent to the following address:*........................................................................................................................................................................................Date: ................................Signature: ................................To: The Registrar of Trade Marks.^{*The person completing the form to provide name of addressee.}

_______________

FORM TM 10A		(r. 63)
[L.N. 146/2003. r. 66.]
NOTICE OF OPPOSITION TO APPLICATION

[L.N. 146/2003, r. 66.]

CERTIFICATE OF REGISTRATION OF TRADE MARK

Trade Mark

Registration details:Part of Register trade mark is registered in: A or B .......................................Trade Mark No. ...............................................................................Class or classes: ............................................................................Goods/Services: ..............................................................................Registered proprietor: .......................................................................Effective date of registration: ..............................................................The trade mark shown above has been registered under the Trade Marks Act.The registration expires on ..................................................................Sealed at my direction.Date: ......................................................Signature of Registrar: ....................................

_______________

FORM TM 11[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 12[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 13[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 14		(r. 71)
[L.N. 146/2003. r. 66.]
REQUEST TO REGISTER ASSIGNMENT OR TRANSMISSION

In the matter of Trade Mark No. ..............................................................Class: .......................................................................................Person entitled, by assignment or transmission, to trade mark:Name: ........................................................................................Trade or business address: .................................................................................................................................................................Trading style (if any): ......................................................................I, the person described above, request that I be registered as the proprietor of the trade mark described above.Particulars of instrument of assignment or transmission or statement of case:............................................................................................................................................................................................(If an instrument is described above, a copy of it shall accompany the application.)(If the trade mark is assigned, the following questions must be answered.)

1.At the time of the assignment, was the trade mark used in a business in the goods or services to which the trade mark relates?☐ yes ☐ no

2.Was the assignment made otherwise than in connection with the goodwill of the business described in item 1 above:☐ yes ☐ no(If the answer to both of questions 1 and 2 above is yes, the applicant is required to leave the copy and proof required under rule 76(1).)Date: ....................................Signature: ....................................Signature of current registered proprietor (optional): ....................To: The Registrar of Trade Marks.

_______________

FORM TM 15[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 16[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 17		(rr. 81(1), 85(2) & 101(1))
[L.N. 146/2003. r. 66.]
REQUEST TO ALTER TRADE OR BUSINESS ADDRESS IN REGISTER

In the matter of Trade Mark No. .............................................................Name and address of person making the request:............................................................................................................................................................................................I am☐ the registered proprietor of the trade mark described above☐ a registered user of the trade mark described aboveI request that my trade or business address, as shown in the Register in relation to the trade mark described above, be changed to the following:............................................................................................................................................................................................Date: ................................................Signature:.........................................To: The Registrar of Trade Marks

_______________

FORM TM 18[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 19		(rr. 85(2) & 108(2))
[L.N. 146/2003. r. 66.]
APPLICATION TO CORRECT CLERICAL ERROR IN REGISTER OR TO AMEND DOCUMENT, ETC.

This is an application☐ to correct a clerical error in the Register for Trade Mark No.☐ to amend Application No. .......................☐ to amend another document or drawing or other representation(specify: ...........................................Name and address of applicant:..........................................................................................................................................................................................Description of correction or amendment:............................................................................................................................................................................................Date: ..............................................Signature: .........................................The Registrar of Trade Marks.

_______________

FORM TM 20		(rr. 85(2) & 101(1))
[L.N. 146/2003. r. 66.]
APPLICATION TO CHANGE NAME OR DESCRIPTION IN REGISTER

In the matter of Trade Mark No. .............................................................I am☐ the registered proprietor of the trade mark described above☐ a registered user of the trade mark described aboveCurrently my name and description are shown in the Register in the relation to the trade mark described above as follows:............................................................................................................................................................................................I request that my name and/or description, as shown in the Register in relation to the trade mark described above, be changed to the following:............................................................................................................................................................................................Description of circumstances in which name or description has changed:............................................................................................................................................................................................Date: .............................................................Signature: ................................................To: The Registrar of Trade Marks

_______________

FORM TM 21		(r. 84A(1)(a))
[L.N. 146/2003. r. 66.]
APPLICATION TO SURRENDER TRADE MARK FOR ALL GOODS AND SERVICES

In the matter of Trade Mark No. ..............................................................Class: .......................................................................................Name of registered proprietor: ...............................................................Trade or business address: ...................................................................Description of trade mark: ...................................................................I, the proprietor of the trade mark described above, apply to surrender the trade mark in respect of all the goods or services in respect of which it is registered.Names and addresses of persons with a registered interest in the trade mark:..........................................................................................................................................................................................................................................................................................Attached to this application is a certification by the proprietor that each person with a registered interest listed above either-

(i)has been given notice of the proposed surrender at least ninety days before the application is made; or

(ii)is not affected by the surrender or has consented to it.

Date: .........................................................Signature: ......................................To: The Registrar of Trade Marks.

_______________

FORM TM 22		(r. 84A(1)(b))
[L.N. 146/2003. r. 66.]
APPLICATION TO SURRENDER TRADE MARK FOR SOME GOODS AND SERVICES

In the matter of Trade Mark No. ..............................................................Class: .......................................................................................Name of registered proprietor: ...............................................................Trade or business address: ...................................................................Description of trade mark: ...................................................................I, the proprietor of the trade mark described above, apply to surrender the trade mark in respect of the following goods or services:..........................................................................................................................................................................................................................................................................................Names and addresses of persons with a registered interest in the trade mark:............................................................................................................................................................................................Attached to this application is a certification by the proprietor that each person with a registered interest listed above either-

(i)has been given notice of the proposed surrender at least ninety days before the application is made; or

(ii)is not affected by the surrender or has consented to it.

Date: .........................................................Signature: ......................................To: The Registrar of Trade Marks.

_______________

FORM TM 23		(r. 85(2))
[L.N. 146/2003. r. 66.]
APPLICATION TO ENTER DISCLAIMER OR MEMORANDUM IN REGISTER

_______________

FORM TM 24		(r. 89)
[L.N. 146/2003. r. 66.]
APPLICATION TO ADD TO OR ALTER REGISTERED TRADE MARK

In the matter of Trade Mark No. .............................................................Name of registered proprietor: ...........................................................Trade or business address:..............................................................................................I am the registered proprietor of the trade mark described above.I request that the trade mark described above be added to or altered in the following particulars:............................................................................................................................................................................................so that the new trade mark shall appear as follows:

Date: ...............................................Signature: ......................................To: The Registrar of Trade Marks

_______________

FORM TM 25		(rr. 82(1) and 84(1))
[L.N. 146/2003. r. 66.]
APPLICATION FOR THE MAKING, EXPUNGING OR VARYING OF AN ENTRY IN THE REGISTER

In the matter of Trade Mark No. ..............................................................Name of registered proprietor: ...........................................................Trade or business address:..............................................................................................Name and address of applicant:..........................................................................................................................................................................................................................................................................................I apply for the making, expunging or varying of an entry in the Register in relation to the trade mark described above in the following manner:............................................................................................................................................................................................This application is accompanied by the statement required under rule 82(1).(If the applicant is not the registered proprietor of the trade mark a copy of this application and the statement required under rule 82 (1) is required under rule 82(2)).............................................................................................................................................................................................Date: ...............................................Signature: ......................................To: The Registrar of Trade Marks

_______________

FORM TM 26		(r. 84(1))
[L.N. 146/2003. r. 66.]
APPLICATION FOR LEAVE TO INTERVENE IN PROCEEDINGS FOR THE MAKING, EXPUNGING OR VARYING OF AN ENTRY IN THE REGISTER

In the matter of Trade Mark No. ..............................................................Name of registered proprietor: ...........................................................Trade or business address:..............................................................................................Name and address of applicant:............................................................................................................................................................................................I apply for leave to intervene in the proceedings relating to the making, expunging or varying of an entry in the Register in relation to the trade mark described above.My interest in the trade mark is as follows:............................................................................................................................................................................................Address for service in Kenya for these proceedings:............................................................................................................................................................................................Date: ...............................................Signature: ......................................To: The Registrar of Trade Marks.

_______________

FORM TM 27		(r. 84(1))
[L.N. 146/2003. r. 66.]
REQUEST FOR SEARCH UNDER RULE 114/APPLICATION FOR PRELIMINARY ADVICE AS TO DISTINCTIVENESS

PART 1 — REQUEST FOR SEARCH

(to be completed in all cases)

Name and address of person making the request:............................................................................................................................................................................................I hereby request that a search be made in respect of goods and services in the following classifications:............................................................................................................................................................................................to ascertain whether any mark is on record that resembles the trade mark, duplicate representations of which are attached to this request.

PART 2 - APPLICATION FOR PRELIMINARY ADVICE

(to be completed if making a request under rule 20(1A))

I propose to apply for the registration of a trade mark, duplicate representations of which are attached to this application, in relation to goods and services in the classifications described above in Part 1.Proposed proprietorName: ........................................................................................Trade or business address: .................................................................................................................................................................Trading style (if any): ....................................................................................................................................................................I hereby apply for advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish the goods or services within the meaning of section 12 of the Act or to be inherently capable of distinguishing the goods or services within the meaning of section 13 of the Act.Date: ..............................................Signature: ..........................................To: The Registrar of Trade Marks.

_______________

FORM TM 28[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 29[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 30		(r. 109(1))
[L.N. 146/2003. r. 66.]
REQUEST FOR CERTIFICATE OTHER THAN UNDER SECTION 22 OF THE ACT

Name and address of person making the request:............................................................................................................................................................................................I hereby request a certificate as to the following:............................................................................................................................................................................................Date: ............................................Signature: ................................To: The Registrar of Trade Marks.FORM TM 31[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 32		(rr. 13, 81, 85(2), 101(1))
[L.N. 146/2003. r. 66.]
APPLICATION TO ENTER OR ALTER ADDRESS FOR SERVICE

Name and address of applicant: ...........................................................................................................................................................................................................................................................Description of registration or application to which application relates:............................................................................................................................................................................................I request, for the registration or application described above, that the following be entered as my address for service or that my existing address for service be altered so that it reads as follows:............................................................................................................................................................................................Date: ................................................Signature: .................................To: The Registrar of Trade Marks.

_______________

FORM TM 33[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 34		(r. 94(1))
[L.N. 146/2003. r. 66.]
APPLICATION FOR ALTERATION OF DEPOSITED REGULATIONS RELATING TO CERTIFICATION TRADE MARK

_______________

FORM TM 35
(s. 40 and First Schedule, (r. 93.))
APPLICATION TO THE COURT FOR AN ORDER EXPUNDING OR VARYING AND ENTRY IN THE REGISTER RELATING TO A CERTIFICATION TRADE MARK OR VARYING THE DEPOSITED REGULATIONS

(To be accompanied by a copy and a Statement of Case in duplicate)

In the matter of Certification Trade Mark No. ................................................registered in the name of ....................................................................in Class .....................................................................................I [We] (a)...............................................................................................................................................................................being [an] aggrieved person(s) hereby apply for an order of the court that:

(b)The entry in the register in respect of the above-mentioned trade mark may be (c) expunged [or varied in the following manner ....................................

......................................................................]

(b)The deposited Regulations governing the use of the above-mentioned trade mark may be varied in the following manner: .....................................

..........................................................................................................................................................................................................................................................................................The grounds of my [our] application are as follows: ........................................................................................................................................Address for service in Kenya in these proceedings: .........................................................................................................................................Dated this ..................................... day of .........................., 20 .......

		(d)...................................

To: The Registrar,The High Court,Nairobi.To: The Registrar of Trade MarksP.O. Box 30031,Nairobi.

(a)Here state full name and address.

(b)Strike out either paragraph that is not applicable.

(c)Strike out one of these lines.

(d)Signature.

_______________

FORM TM 36[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 37[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 38[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 39		(r. 40, 1st Sch., r. 93)
APPLICATION FOR THE CERTIFICATE OF THE REGISTRAR UNDER SECTION 25(5) AND RULE 79 WITH REFERENCE TO A PROPOSED ASSIGNMENT OF A REGISTERED TRADE MARK

(To be accompanied by a Statement of Case in duplicate and a copy of the proposed assignment)

In the matter of Trade Marks[s] No.[s] ..................... registered in the name of ................................ in Class[es] .........................Application is hereby made by (a) ................. of ................. being the Registered proprietor[s] of the above-numbered registered trade mark[s], for the Registrar's Certificate under section 25(5) with reference to a proposed assignment of the registered trade mark[s] No.[s] ................ to (b) ................. of ............. in circumstances that are stated full in the accompanying Statement of Case.Dated this ......................... day of ..................., 20 .............

(c)...........................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Here insert the name and trade or business address of the registered proprietor.

(b)Here insert the name and trade or business address of tthe proposed assignee.

(c)Signature.

_______________

FORM TM 40

APPLICATION FOR THE APPROVAL BY THE REGISTRAR UNDER SECTION 25(6) AND RULE 79 OF PROPOSED ASSIGNMENT, OR OF A TRANSMISSION (ON OR AFTER THE APPOINTED DAY). OF A TRADE MARK RESULTING IN EXCLUSIVE RIGHTS IN DEFFERENT PERSONS FOR DIFFERENT PARTS OF KENYA

(To be accompanied by a Statement of Case in duplicate and a copy of the Instrument proposed for the assignment or effecting the Transmission)

In the matter of [a] Trade Mark(s)* Registered under No.(s) .....................................................* in Class(es) ....................................................................the property of ..................................................................................................................................................Application is hereby made by:⁺(1)(a) ................ of ......................... the Proprietor of the Trade Mark(s) shown in the accompanying Statement of Case (b) [registered in his name] and (b) [used by him] in respect of the following goods ........................ for approval by the Registrar of a proposed assignment of the trade mark[s] to (c) ........................... of ............................... in respect of the following goods .......................... to be sold or otherwise traded in in (d) .................. (and to (c) ................... of ........................... in respect of the following goods .......................] in circumstances that are stated fully in the accompanying Statement of Case.^ƚ(2)(e) ........................ of ................... who claims that the Trade Mark(s) shown in the accompanying Statment of Case was (were), in respect of the following goods, namely:and on the (f) .................. day of ................. 19 ......... transmitted to (g) him (to (h) ........................ of ................ (who was his predecessor in title)) by or from (i) .......................... of........................................ by whom the Trade Mark was then used in respect of the following goods, namely ......................... all in circumstances that are stated fully in the accompanying Statement of Case, for approval by the Registrar of the aforesaid transmission.Dated this ..................................... day of ...................., 20 .............

(j)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.^*To be struck out in the case of unregistered trade marks.^ƚ Strike out either paragraph (1) or paragraph (2).(a)Insert here the name and trade or business address of the proprietor.(b)Strike out either if not applicable.(c)Insert here the names and trade or business addresses of the proposed assignee or assignees.(d)Insert the name of the place in Kenya.(e)Here insert the name and trade or business address of the person who claims a transmission to him.(f)Insert here the date of the transmission transmitted which must not precede the appointed day.(g)Strike out the words that are not applicable.(h)Insert here the name and trade or business of address of the predecessor in title, if any.(i)Insert here the name and address of the person who transmitted.(j)Signature.

_______________

FORM TM 41

APPLICATION TO THE REGISTRAR UNDER SECTION 25(7) AND RULE 80 FOR DIRECTIONS FOR THE ADVERTISEMENT OF AN ASSIGNMENT OF TRADE MARKS OTHERWISE THAN IN CONNEXION WITH THE GOODWILL OF THE BUSINESS

(To be accompanied by a duplicate)

Application is hereby made by (a) ..........................................................................................................................................................of............................................................................................for the Registrar's directions with respect to the advertisement of an assignment to him [them] of the following trade marks otherwise than in connexion with the goodwill of the business in which they were used at the time of assignment, namely-

(1) Registered trade marks:Registration Number (b) Class		Goods in respect of which the mark has been used and is assigned

all of which are or were registered in the name of (c) ........................................ of ......................................., who is the assignor.

(2)Unregistered trade marks (d), all being marks used in his business at the time of the assignment in respect of the goods stated below by (c) ....................................... of ..........................................................., who is the assignor:

Representation of mark (b)		Goods in respect of which the mark has been used and is assigned

The date of assignment was the ................. day of ................., 20 ................The instrument effecting the assignment is sent herewith, together with a copy thereof.It is suggested that advertisement shall be directed as follows, namely in .................................................................................................................Dated this ............................. day of .................., 20 .......................

(e)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Here insert the name and trade or business address of the assignee (applicant).

(b)Additional marks and numbers may be given in a signed schedule on the back of the form.

(c)Here insert the name and trade or business address of the proprietor (assignor).

(d)Only those unregistered trade marks passing by the one assignment and used in the same business and for the same goods as those for which one or more of the registered marks are registered may be stated here.

(e)Signature.

_______________

FORM TM 42[Deleted by L.N. 146/2003, r. 66.]

_______________

FORM TM 43		(r. 7(2))
[L.N. 146/2003. r. 66.]
APPLICATION TO ADAPT CLASSIFICATION SO THAT IT IS IN ACCORDANCE WITH SECTION 6(2) OF THE ACT

In the matter of Trade Mark No. ..............................................................Class: .......................................................................................Name of Registered Proprietor: ...............................................................Trade or business address: ...................................................................Address for service: .........................................................................I, the proprietor of the trade mark described above, apply to have the classification of the goods or services in respect of which the trade mark is registered adapted so that they are classified in accordance with section 6 (2) of the Act.Current classification:............................................................................................................................................................................................Proposed classification in accordance with section 6(2) of the Act:............................................................................................................................................................................................Date: ................................................................Signature: ................................................To: The Registrar of Trade Marks.

_______________

FORM TM 44		(r. 7(6))
[L.N. 146/2003. r. 66.]
NOTICE OF OPPOSITION TO APPLICATION TO HAVE CLASSIFICATION ADAPTED

In the matter of Trade Mark No. ............................................Class: .............................................................................Name of Registered Proprietor: ..............................................Name and address of objector: ..............................................................................................................................................................................................................................................................................................................................................................Address for service of objector: ................................................I, the objector named above, give notice that I oppose the application for the adaptation of the classification of the goods or services in respect of which the trade nark described above is registered.This notice of objection is accompanied by a statement, in duplicate, showing how the amendment proposed by the Registrar would be contrary to section 39 (2) of the Act.Date: ....................................................Signature: ......................................To: The Registrar of Trade Marks.Note: This notice must be filed in duplicate.

_______________

FORM TM 45

[Deleted by L.N. 146/2003, r. 66.]

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FORM TM 46		(r. 119)
NOTICE OF ORDER OF COURT FOR ALTERATION OR RECTIFICATION OF REGISTER OF TRADE MARKS

In the matter of the Trade Mark No. .................................................. registered in Class ............................ in the name of ................................................Notice is hereby given to the Registrar that, by an Order of the court made on the ............................................................... day of ..........................., 20 .................., it was directed ......................................An office copy of the Order of the Court is enclosed herewith.Dated this ........................ day of ....................., 20 ...........

(a)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)To be signed by the person interested or his agent.

_______________

FORM TM 47		(r. 88)
REQUEST TO THE REGISTRAR FOR ENTRY ON THE REGISTER AND ADVERTISEMENT OF A NOTE OF A CERTIFICATE OF VALIDITY BY THE COURT UNDER SECTION 47

In the matter of Trade Mark[s] No. [s] ............................................ registered in Class .............. in the name of ...............................I [We] (a) ...........................................................................................................................................................................................................................................................................................................................................................hereby request the Registrar to add to the above-numbered entry [entries] of a trade mark in the register, and to advertise in the Gazette a note that in (b) .................................................................................................................................................................................the court certified that the validity of the said registration[s] came into question and was decided in favour of the proprietor of the trade mark in terms of the accompanying office copy of the certificate of validity.Dated this ................................... day of ..................., 20 ...............

		(c)...................................

To: The Registrar of Trade MarksP.O. Box 30031,Nairobi.

(a)Here state the name and address of the registered proprietor.

(b)Here state the nature of the proceedings with the names of the parties to them, in which the certificate was given.

(c)Signature.

_______________

FORM TM 48
APPLICATION FOR REGISTRATION OF REGISTERED USER

(To be accompanied by a statement of case giving particulars and stating as required by section 31(4), verified by a Statutory Declaration made by the Proprietor, or by some person authorized top act onhis behalf and approved by the Registrar)Application is hereby made by (a) ........................... who is [are] the registered proprietor(s) of trade marks[s] No.[s] ...........................(b) registered in class ................ in respect of (c) .................. that (d) ........................................... of (e) ..............................trading as (f) ..............................who hereby joins in the application, may be registered as a registered user of the above-numbered registered trade mark[s] in respect of (g) ..........................................................subject to the following conditions or restrictions: (h) ...........................................................

(i)The proposed permitted use is to end on the ............................................. day of .................., 20...............

The proposed permitted use is without limit of period.

(j)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.Note:- A request for the entry of an address for service of the registered user may be made free in Form TM 32 if it accompanies this form.

(a)Here insert full name trade or business address and description of the registered proprietor(s).

(b)Additional numbers may be given in a signed schedule on the back of the form.

(c)Here insert the specification in the Register.

(d)Here insert the full name, description and nationality of the individual, firm or body corporate proposed as registered user. The names of all partners in a firm must be given in full. In the case of a body corporate brief particulars of the kind and country of incorporation should be stated.

(e)Here insert the full trade or business address of the proposed registered user.

(f)Here insert trading style, if any.

(g)Here insert designation of goods (which must be comprised within the specification).

(h)Write "none" if there are no conditions or restrictions.

(i)Strike out the words that are not applicable.

(j)Signature.

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FORM TM 49		(r. 31 and r. 97)
APPLICATION BY THE REGISTERED PROPRIETOR OF A TRADE MARK FOR VARIATION OF THE REGISTRATION OF A REGISTERED USER THEREOF WITH REGARD TO THE GOODS OR THE CONDITIONS OR RESTRICTIONS

To be accompanied by a Statement of the Grounds for the application and the written consent (if given) of the Registered User)

Application is hereby made by (a) ................................................... the proprietor of trade mark[s] No.[s] (b) ..................................... registered in Class .......................... in respect of (c) ................................... that the registration of (d) ............................... as a registered user of the above-numbered trade mark[s] in respect of (e) ......................may be varied in the following manner: (f) .............................Dated this ................................. day of ..................., 20.........

(g)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.(a)Here insert the full name, description and trade or business address of the registered proprietor.(b)Additional numbers may be given in a signed schedule on the back of the form.(c)Here insert the specifications in the Register.(d)Here insert the full name, description and trade or business address of the registered user.(e)Here insert the goods in respect of which user is registered.(f)Here state in terms the manner in which it is requested that the entry should be valid.(g)Signature.

_______________

FORM TM 50		(r. 31(8)(b) and r. 98)
APPLICATION BY THE REGISTERED PROPRIETOR OF A TRADE MARK OR BY ANY OF THE REGISTERED USERS OF THE TRADE MARK FOR THE CANCELLATION OF ENTRY OF A REGISTERED USER THEREOF

(To be accompanied by a Statement of the Grounds for the application)

Application is hereby made by (a) ................................. being (b) the Registered Proprietor [a Registered User] of trade mark[s] ........................ (c) registered in Class ...................... in respect of (d) .................................. for the cancellation of the entry under the above-mentioned registration[s] of (e)....................................... as registered user of the trade mark[s] in respect of (f) ..............................Dated this ................................... day of .................., 20........

		(g)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.(a)Here insert the full name, description and trade or business address of the applicant(s).(b)Strike out the words that are not applicable.(c)Additional numbers may be given in a signed schedule on the back of the form.(d)Here insert the specification in the Register.(f)Here insert the full name, description and trade or business address of the registered user whose entry is sought to be cancelled.(g)Signature.

_______________

FORM TM 51		(r. 31(8)(c) and r. 99)
APPLICATION FOR CANCELLATION OF ENTRY OF A REGISTERED USER OF A TRADE MARK

(To be accompanied by a Statement of the Grounds for the application)

In the matter of Trade Mark[s] No.[s] ................................ (a) registered in Class ........................ in the name of (b) ...................................Application is hereby made by (c) ................................................ whose address for service in Kenya in these proceedings is ...................................... for the cancellation of the entry under the above-mentioned registration[s] of (d) ......................... as registered user thereof in respect of (e) ................................The grounds of this application, particulars of which are given in detail in the accompanying statement of case, are (f) ...............................................Dated this ............................. day of ....................., 20 ..........

(g) ..........................................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Additional numbers may be given on a signed schedule on the back of this form.

(b)Here insert the full name, trade or business address and description of the registered proprietor as entered in the register.

(c)Here insert the name and address of the applicant for cancellation.

(d)Here insert the name, trade or business address and description of the registered user as entered in the register.

(e)Here insert the goods in respect of which the registered user is entered.

(f)Here insert one or more of the subparagraph (c) of section 31(8) numbered (i), (ii), (iii).

(g)Signature.

_______________

FORM TM 52
NOTICE TO THE REGISTRAR UNDER SECTION 31(9) AND RULE 100 OF INTENTION TO INTERVENE IN PROCEEDINGS FOR THE VARIATION OR CANCELLATION OF AN ENTRY OF A REGISTERED USER OF A TRADEMARK

(To be accompanied by a Statement of the Grounds for Intervention)

In the matter of a Trade Mark No. ............................. registered in Class ..................... in the name of (a) ....................................AndIn the matter OF a registration of (b) ............................... thereunder as a Registered User of the mark.In reply to the Register's notification, dated the .......................... day of ....................................., 20 ..............., notice is hereby given of my intention To intervene in the proceedings in the above matter.Dated this ................................. day of ..................., 20 ........

		(c)...................................

To: The Registrar of Trade Marks,P.O. Box 30031,Nairobi.

(a)Insert here the name of the registered proprietor.

(b)Insert here the name and trade or business address of the registered user.

(c)Signature.

_______________

FORM TM 53		(r. 102(4))
[L.N. 146/2003. r. 66.]
APPLICATION FOR EXTENSION OF TIME

This is an application for an extension of time.

Name and address for service of applicant:

Description of the matter with respect to which the time relates:

Extension sought:

Grounds on which the application is based:

Names and addresses of other parties:

Date: ..................................................Signature: ........................................Extension granted:Signature of Registrar:Date: ....................................................

_______________

FORM TM 54		(r. 115)
[L.N. 146/2003. r. 66.]
ORDER FORM FOR COPY OF DOCUMENT

Name and address of person seeking copy:

I wish to obtain a copy of a document of the following type (tick the relevant box)☐ a judgment or order of the Registrar or other document used in a proceeding before the Registrar.☐ another documentDescription of document:..........................................................................................................................................................................................I wish to have the copy of the document certified (tick the relevant box):☐ Yes☐ NoDate: ..................................................Signature: ........................................To: The Registrar of Trade Marks.

_______________

FORM TM 55		(r. 29A(3))
[L.N. 146/2003. r. 66.]
APPLICATION TO ADD GOODS OR SERVICES TO A TRADE MARK OR APPLICATION

In the matter of Trade Mark No. ....................... or Application No: .....................................Class: .............................................................................Name of registered proprietor/applicant: .....................................Trade or business address: ...................................................I, the proprietor or applicant of the trade mark or application described above, apply to add the following goods or services to those in respect of which the trade mark is or would be registered.Description of goods or services:.............................................................................................................................................................................................................................................................................................................................................................................................................Date: ..................................................Signature: ........................................To: The Registrar of Trade Marks.

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History of this document

31 December 2022 this version

Revised by 24th Annual Supplement

29 August 2003

Amended by Trade Marks (Amendment) Rules, 2003

03 February 1995

Amended by Trade Marks (Amendment) Rules, 1995

01 January 1991

Amended by Trade Marks (Amendment) Rules, 1991

24 June 1988

Amended by Trade Marks (Amendment) Rules, 1988

03 October 1975

Amended by Trade Marks (Amendment) Rules, 1975

02 July 1971

Amended by Trade Marks (Amendment) Rules, 1971

13 March 1970

Amended by Trade Marks (Amendment) Rules, 1970

20 October 1959

Amended by Trade Marks (Amendment) Rules, 1959

31 December 1956

Published in Kenya Gazette 68

Commenced

The Trade Marks Rules

Legal Notice 575 of 1956

The Trade Marks Rules

Related documents

LAWS OF KENYA

TRADE MARKS ACT

THE TRADE MARKS RULES

LEGAL NOTICE 575 OF 1956

1. Citation

2. Interpretation

Fees and Forms

3. Fees

4. Forms

5. [Deleted by L.N. 146/2003, r. 3.]

Classifications under previous system

6. Old classifications preserved

7. Conversions to new classification system

8. [Deleted by L.N. 146/2003, r. 4.]

Documents

9. Size, etc., of documents

10. Signature of documents by partnerships, companies and associations

11. Service of documents

Address

12. Address

13. Address for service

Agents

14. Agency

Registrable Trade Marks and Preliminary Advice (Section 43)

15. Registrable trade marks

16. Flags, emblems, arms, etc.

17. Arms of city, etc.

18. Living persons or persons recently dead

19. Name and description of goods or services on a trade mark

20. Preliminary advice by Registrar as to distinctiveness

Application for Registration of a Trade Mark

21. Form of application

22. Representation of mark

23. [Deleted by L.N. 146/2003, r. 7.]

24. [Deleted by L.N. 146/2003, r. 7.]

25. Separate applications

26. Representations to be satisfactory

27. Specimens of trade marks in exceptional cases

28. Series of trade marks

29. Transliteration and translation

29A. Application to add goods or services

Procedure on Receipt of Application for Registration of a Trade Mark

30. Search

31. Registrar’s powers on application

32. Objection by Registrar

33. Conditions by Registrar

34. Decision of Registrar

35. Disclaimer

Defensive Trade Marks

36. Application under section 30 of the Act

Certification Trade Marks

37. Application under section 40 of the Act

38. Authorisation to proceed

39. Case, draft regulations

40. Regulations and application to be open to inspection

41. Registrar’s refusal

Advertisement of Application

42. Advertisement of application

43. Representations or information from applicant

44. Advertising of series of trade marks

45. Advertisements under sections 21 (10) and 38 (2) and (4) of the Act

45A. Costs of advertisement

Opposition to Registration

46. Opposition

47. Notice of opposition

48. Counter-statement

49. Evidence in support of opposition

50. Evidence in support of application

51. Evidence in reply by opponent

52. Further evidence

52A. Abandonment of application or opposition

53. Exhibits

54. Hearing

55. [Deleted by L.N. 146/2003, r. 24.]

56. Security for costs

57. Costs in uncontested case