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The Trade Marks (International Registration) Rules

Legal Notice 145 of 2003

This is the latest version of this Legal Notice.
The Trade Marks (International Registration) Rules
Citation
Legal Notice 145 of 2003
Primary work
Trade Marks Act
Date
31 December 2022
Language
English
Type
Legal Notice
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LAWS OF KENYA

TRADE MARKS ACT

THE TRADE MARKS (INTERNATIONAL REGISTRATION) RULES

LEGAL NOTICE 145 OF 2003

  • Published in Kenya Gazette Vol. CV—No. 85 on 22 August 2003
  • Commenced on 22 August 2003
  1. [Revised by 24th Annual Supplement (Legal Notice 221 of 2023) on 31 December 2022]

Part I – PRELIMINARY

1. Citation

These Rules may be cited as the Trade Marks (International Registration) Rules.

2. Definitions

In these Rules, unless the context otherwise requires—“applicable treaty” means whichever between the Madrid Agreement or the Madrid Protocol which applies to the registration;“international registration” means registration with the International Bureau under the Madrid Agreement or the Madrid Protocol.“Trade Marks Rules” means the rules of that name made under the Act.

3. Forms

The forms set out in the First Schedule shall be the prescribed forms for the purposes of these Rules.

4. Fees

The prescribed fees for purposes of these Rules shall be as set out in the Second Schedule.

5. Institute to be office for Kenya

The Institute shall be the office for Kenya for the purpose of the Madrid Agreement and the Madrid Protocol and, in carrying out that function, the Institute shall comply with the Madrid Agreement and the Madrid Protocol and the regulations made under those treaties.

Part II – APPLICATION IN KENYA FOR INTERNATIONAL REGISTRATION

6. Application

(1)A person who is a proprietor of a registered trade mark, or who has applied for the registration of a trade mark, may file an application for international registration of the trade mark with the Institute if, under the applicable treaty, the person is entitled to do so.
(2)An application under subrule (1) shall be made in accordance with the applicable treaty and shall be accompanied by the prescribed fee payable to the Institute and the applicable fees under the applicable treaty.

7. Examination and forwarding by Institute

(1)The Institute shall examine the application for international registration and, if it complies with the requirements under the applicable treaty, forward the application together with the applicable fees, if any, to the International Bureau.
(2)The expenses incurred by the Institute in forwarding the application to the International Bureau shall be met by the applicant.

Part III – INTERNATIONAL APPLICATIONS DESIGNATING KENYA

8. Application of Part

This Part shall apply with respect to an application for international registration of a trade mark that requests the extension of protection to Kenya.

9. Initial examination

Upon being notified of an application by the International Bureau, the Institute shall examine the application and either—
(a)notify the International Bureau that protection for the trade mark is refused if there are grounds for doing so under the applicable treaty; or
(b)advertise the application in accordance with the Trade Mark Rules.

10. Applicant’s rights on refusal after initial examination

(1)If the Institute notifies the International Bureau, under rule 8(a), that protection for the trade mark is refused the applicant shall have the same remedies under the Trade Marks Rules as he would have if the application was an application thereunder made directly to the Institute.
(2)If, as a result of the applicant pursuing his remedies under subrule (1), the refusal is withdrawn, the Institute shall advertise the application under rule 9(b).

11. Opposition

(1)Any person may, within sixty days of the advertisement of an application under rule 9 (b), give notice to the Registrar of opposition to the intended registration.
(2)The Registrar shall, upon receiving a notice of opposition under this Rule, give notice of the same to the International Bureau, indicating the main grounds contained therein.
(3)The provisions of the Trade Marks Rules shall, with necessary modifications, apply to a notice served under this rule.
(4)If it is determined, based on grounds under the applicable treaty, that the trade mark should be refused protection, the Institute shall notify the International Bureau that protection for the trade mark is refused.

12. Refusal to be in accordance with treaty, etc.

In refusing protection for a trade mark under rule 8(a) or 10(3), the Institute shall act in accordance with the applicable treaty and the regulations under that treaty.

13. Partial refusal

If protection is refused with respect to some, but not all, of the goods or services for which protection is sought, this Part shall apply, with necessary modifications, as though there were two applications, one with respect to the goods or services for which protection was refused and one with respect to the goods or services for which protection was refused.

14. Supplementary Register

(1)The Registrar shall maintain a Register to be known as the Supplementary Register (International) for the purpose of recording, all international trade marks registered under these Rules together with the names and addresses of their proprietors.
(2)The provisions of the Trade Marks Rules in relation to the Register maintained thereunder shall, with necessary modifications, apply to the Supplementary Register maintained under this Rule.

15. Extracts from Register

(1)Any person may request the Registrar to cause a search to be made in the Supplementary Register maintained under rule 14 in respect of specified goods or services and may request for extracts thereof or copies of other documents maintained by the Registrar.
(2)Requests under this rule for a search and for extracts from the Supplementary Register or copies of other documents, shall be in Forms TM 27 and TM 54 of the Trade Marks Rules respectively.

16. Effects of international registration

(1)A trade mark that has been internationally registered, the protection of which has been extended to Kenya, shall have the same effect and enjoy the same protection as specified in section 7 of the Act in relation to trade marks registered under Part A of the Register maintained under that section.
(2)Subrule (1) does not apply if protection for the trade mark is refused under rule 8(a) or 10 (3) or, if protection is refused with respect to some, but not all, of the goods or services to which the trade mark relates, subrule (1) does not apply with respect to those goods or services.
(3)A trade mark described in subrule (1) may be—
(a)taken off the Register under section 29 of the Act;
(b)cancelled under section 30(4) of the Act;
(c)expunged or varied under section 35 of the Act; or
(d)expunged or varied under section 36 of the Act.
(4)The Trade Mark Rules shall apply, with necessary modifications, for the purposes of subrule (3).

Part IV – TRANSFORMATION OF AN INTERNATIONAL REGISTRATION TO A KENYAN REGISTRATION

17. Application of Part

(1)This Part applies if the international registration of a trade mark registered under the Madrid Protocol is cancelled at the request of the office where the basic registration was made if, before being cancelled—
(a)the protection of the trade mark was extended to Kenya;
(b)the extension of the protection of the trade mark to Kenya was requested and had not been refused but the time for giving notification of such a refusal under the applicable treaty had not expired; or
(c)the extension of the protection of the trade mark to Kenya was requested and refused but the proprietor’s remedies to challenge that refusal had not yet been exhausted.
(2)In this rule, “basic registration” means the registration of a trade mark in a country, other than Kenya, upon which the international registration is based.

18. Application to transform to Kenyan registration

(1)The proprietor of an internationally registered trade mark which is cancelled may apply to have the international registration transformed to a Kenyan registration.
(2)An application under subrule (1) shall be made to the Registrar in form TM (International) 1.

19. Automatic registration

If an application for a transformation is made in the circumstances described in rule 13(1)(a), the application to transform the international registration shall be granted and the trade mark shall be registered.

20. Continuation of unfinished proceedings

If an application for a transformation is made in the circumstances described in paragraph (b) or (c) of rule 13(1), the application to transform the international registration shall be dealt with under the Trade Marks Rules as though it were an application under those Rules subject to the following—
(a)If the international application had been advertised under rule 8(b), that advertisement shall be deemed to have been an advertisement of the application under the Trade Marks Rules;
(b)any steps or proceedings taken under these Trade Marks Rules with respect to the extension of protection to Kenya before the international registration was cancelled shall be deemed to have been taken with respect to the transformation application and any such proceedings that have not been completed shall be continued under the Trade Marks Rules.

Part V – PENDING APPLICATIONS

21. Pending applications

(1)Any international registration in respect of which an application is pending before the Institute at the time of the coming into operation of these Rules shall—
(a)where the period of notice prescribed under the applicable treaty has expired, be entered into the register maintained under Rule 14; and
(b)where the period referred to in paragraph (a) has not expired, be examined by the Registrar in accordance with these Rules.
(2)Any person with an objection to any registration under paragraph (a) may apply for rectification of that register under Rule 16(3).

FIRST SCHEDULE [r. 3]

FORMS

FORM TM (INTERNATIONAL) 1r. 14(2)
TRADE MARKS ACT(Cap. 506)
APPLICATION TO HAVE INTERNATIONAL REGISTRATION TRANSFORMED INTO KENYAN REGISTRATION
1.Trade Mark(One representation of the trade mark shall be set out in the above box)
2.Application is hereby made for the transformation of the registration of the above trade mark into a Kenyan registration.
3.Classification: ...........................................Goods/Services ..............................................Proprietor: ..............................................Trade or business address ..................................Trading style: ........................................
4.Additional information where necessary ...................Date: ......................................................Signature: ...............................................To: The Registrar of Trade Marks

SECOND SCHEDULE [r. 4]

FEES

Descriptionof FeeLocal FeeKsh.Foreign FeeUS$CorrespondingForm
1. On handling an application for international registration, in addition to the fees under the applicable treaty.1,000- 
2. On filing an application for transformation under Rule 18.-100TM 1(International)
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.
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History of this document

31 December 2022 this version
22 August 2003
Published in Kenya Gazette 85
Commenced