Kenya proceeds with the publication of expired trademarks

In a special edition of the Industrial Property Journal, the Industrial Property Institute of Kenya (KIPI) has stated that as of 15 February 2021 it will now publicly notify trademark owners that have not filed a renewal application for their marks but have been notified of the expiry date. What is more, KIPI has listed more than 2,400 expired marks, which it intends to remove from the trademark register.

The publication follows a previous update on 15 June 2020, in which KIPI published information on a number of updated trademark rules. These provisions state that trademark owners will now receive notice if no application for the renewal of a registered trademark has been received after the 10-year validity period. This information will be published in the Industrial Property Journal if no application to renew the registered trademark has been received within 60 days from the notification date. This aims to give legal force to the rules under Section 23 of the Trademarks Act, which states that trademark registrations expire after 10 years, notwithstanding renewals.

The special edition of the journal clarifies that following Provisions 67 and 68 of the Trademark Rules, a notice will be published in the bulletin under the following circumstances:

• If the owner of a registered trademark makes an application to renew its listed mark and pays the renewal fee (and the additional late renewal fee) within 30 days from the date of publication, the trademark will be renewed and will not be removed from the trademark register.
• If no application to renew a mark listed in the bulletin is received within 30 days from the date of the publication, the trademark will be immediately removed from the trademark register.
• If the mark has been removed from the register, the owner can file an application to renew it upon payment of the renewal fee plus additional fees for restoration. Should the register show that is fair to do so, the trademark will then be restored.

This is a co-published article, which was originally published in the World Trademark Review (WTR)