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"Someone has copied my logo and is selling counterfeit versions of my product. What can I do?"
The answer depends heavily on whether you have registered your trademark. Here is the complete picture.
Why registration matters
Registration of a trademark is prima facie evidence of its validity and gives the registered owner the exclusive right to use the mark in relation to the goods or services for which it is registered.
Without registration, you have limited common law rights based on passing off which requires you to prove existing goodwill and reputation, a misrepresentation, and actual damage. Registration shifts the burden significantly in your favour and makes enforcement far more straightforward.
Step 1: Clearance search
Before filing, conduct a clearance search at KIPI (Kenya Industrial Property Institute) to check no identical or confusingly similar mark is already registered in your class. Identical phonetic marks in similar classes will be refused. Do not skip this step since it avoids wasted filing fees and delays.
Step 2: Classification
Kenya uses the Nice Classification System — 45 classes of goods and services. You must file in every class relevant to your business. Filing in class 25 (clothing) does not protect you in class 35 (retail services). Many businesses under-protect by filing in too few classes.
Step 3: Filing and examination
Applications are filed at KIPI. The Registrar examines the application for distinctiveness, likelihood of confusion, and procedural compliance. Objections are raised formally and one has an opportunity to respond. If no objection is raised or maintained, the mark is advertised in the Kenya Industrial Property Journal.
Step 4: Opposition period
Third parties have 60 days from advertisement to file an opposition. Where an opposition is filed, both parties file evidence and the Registrar (or Tribunal) decides. This is a common point of dispute in fast-growing consumer markets.
Step 5: Registration and renewal
Registration confers protection for 7 years from the filing date, renewable for further 10-year periods. Protection runs from the date of filing, not registration which matters when there is a gap between filing and grant.
A Kenyan registration protects you in Kenya only. For East African coverage, consider ARIPO (African Regional Intellectual Property Organization) registration, which covers multiple member states including Kenya, Uganda, Tanzania, Rwanda, and Zimbabwe in one application. For broader international coverage, the Madrid Protocol to which Kenya acceded in 1998 allows a single international application covering member states.
Susan Musyoka, Managing Partner Gallant Law & Associates has managed multi-jurisdiction registrations across Kenya, Egypt, Sudan, Uganda, and the USA.
Enforcement when your mark is infringed
Options include: a cease and desist letter (often effective for online infringement); an Anton Piller order (search and seizure) through the High Court where evidence might be destroyed; an injunction; and an action for damages or account of profits. Criminal prosecution is available under the Trade Marks Act for deliberate counterfeiting.
Ready to protect your brand?
We handle the full KIPI registration process — clearance search, filing, examination responses, and enforcement. Contact us today.
Talk to Gallant before you make the decision
If this raises a question specific to your situation, we are glad to talk it through.
This article is general legal information, not legal advice, and does not create a lawyer–client relationship.