Trademarks in Kenya are assignable and transmissible, meaning their ownership can be transferred from one party to another. This transfer can occur with or without the associated business’s goodwill1.
(Section 25 of the Trademarks Act)
Assignment and Transmission
Assignment refers to the transfer of trademark ownership through an act of the parties involved. This is usually done through a Deed of Assignment of a Trademark, which is a document that transfers the rights, title, and interest in the trademark to a third party.
Transmission refers to the transfer of ownership through operation of law, such as inheritance, or any other means that is not an assignment.
Scope of Transfer:
A registered trademark can be transferred for all goods or services for which it is registered, or only for some of them.
An unregistered trademark can also be transferred if it is used in the same business as a registered trademark, and is transferred at the same time and to the same person as that registered trademark.
Restrictions on Transfer
A trademark transfer is not valid
- If it creates a situation where multiple parties have exclusive rights to use similar or identical trademarks for similar goods or services.
- If it results in one party having an exclusive right to use it in one area of Kenya, and another party having a right to a similar or identical mark in another area of Kenya. Exception: if the Registrar determines that the use of the trademarks would not be contrary to public interest, such a transfer may be approved.
Procedure for Assignment
- Submit statement to registrar for certificate regarding the validity of the transfer; (Form TM39
- Registrar determines if assignment is valid; (Form TM 40):
- If declared valid, the new owner must apply for registration within six months of the certificate of issuance. (Form TM 14)
- If a trademark is assigned without the business’s goodwill, the assignee must apply to the Registrar for directions on advertising the assignment, and then must advertise it as directed. (Form TM 41):
Registration of Transfer:
(Section 28 of the Trademarks Act)
- When a trademark is transferred, the new owner must apply to the Registrar to register their title.
- Upon receiving the application and proof of title, the Registrar will register the new owner as the proprietor of the trademark.
- The Registrar enters the details of the assignment or transmission into the register.
- Deed of Assignment: The transfer of a trademark is typically formalized using a Deed of Assignment.
- The Deed of Assignment is then presented for stamp duty, which is set at 2% of the assignment value.
- Submit the Deed of Assignment along with Form TM 14 to the Registrar of Trademarks for registration.
Fees:
There are fees associated with the registration of an assignment or transmission.
Application fee for registering an assignment or transmission (Form TM 14):
– Kes 3,000 for the (first class)
– Kes 2,000 for each (subsequent class)
Application fee for a certificate under section 25(5) of the Act (Form TM 39):
– Kes 3,000 for the first class,
– Kes 2,000 for each subsequent class.
Application fee for approval under section 25(6) of the Act (Form TM 40):
- Kes 500 for each trademark.
Application fee for directions regarding the advertisement of an assignment, under r. 80(1), for directions under s. 25(7) of the Act (Form TM 41):
- Kes 6,000 for the first class,
- Kes 5,000 for each subsequent class.
Power of the Registered Proprietor:
The person registered as the proprietor of a trademark has the authority to assign the trademark and issue receipts for any consideration for the assignment.