In Kenya, the registration of a trademark confers upon the proprietor the exclusive right to use the mark in connection with the specific goods or services for which it is registered. However, to maintain its validity and enforceability, a registered trademark must be renewed every ten (10) years in accordance with the provisions of the Trademarks Act(Cap 506) and the Trademark Rules.
The legal framework for renewal
The renewal of trademarks in Kenya is governed by Section 23 of the Trademarks Act (Cap 506) and Rules 64 to 70 of the Trademark Rules. These provisions allow for a registered trademark to be renewed for successive ten-year periods, either from the date of initial registration or from the date of last renewal. Renewal may be initiated within ninety (90) days before the expiry of the current registration. To do so, the registered proprietor is required to:
- Submit a duly completed Form TM10 to the Registrar of Trademarks at the Kenya Industrial Property Institute (KIPI); and
- Pay the prescribed renewal fee, which varies depending on whether the proprietor is a Kenyan or a foreign entity.
Timeline for renewal
Renewal should be completed on or before the expiry of the current registration period. If not renewed on time, a grace period of thirty (30) days is provided under the Trademark Rules. During this period, the trademark may still be renewed without being removed from the Register on payment of the surcharge for late renewal.
The consequences of non-renewal
Where a trademark is not renewed within the prescribed period, including the statutory grace period, it is liable to be removed from the Register of Trademarks. Under Rule 67 of the Trademark Rules, if the renewal fee is not paid by the expiry date, the Registrar shall advertise the non-renewal of the trademark in the Kenya Industrial Property Journal for a period of sixty (60) days. If no renewal is effected within this window, the trademark is formally removed and the proprietor loses the legal rights conferred by registration, including the ability to enforce the mark. While the removal does not entirely extinguish proprietary interests, it substantially weakens the proprietor’s legal position.
If a trademark is removed from the Register due to non-payment of renewal fees, the proprietor may still seek to restore it. Restoration refers to the process of reinstating a removed trademark back onto the Register. This is done by submitting an application to the Registrar of Trade Marks, accompanied by payment of both the outstanding renewal fee and the prescribed restoration fee. While the law does not impose a specific statutory deadline for restoration, it is advisable to act promptly to minimize the risk of third-party claims, conflicting applications or permanent loss of rights.
How CM Advocates LLP’s Intellectual Property & TMT Unit Can Support You
At CM Advocates LLP, our Intellectual Property and Telecommunications, Media & Technology (TMT) Unit offers comprehensive trademark portfolio management services. With an established presence in Kenya, Uganda, Tanzania, Rwanda, South Sudan, Zambia and Ethiopia, we are well-positioned to provide regionally informed legal support for product launches, commercialization of intellectual property rights and the protection of brand assets. Our trade mark support services include:
- Monitoring renewal deadlines: We track your trademark portfolio and send timely alerts to help prevent lapses.
- Filing renewal applications: We prepare and file all necessary documents to ensure seamless and compliant renewals across jurisdictions.
- Managing restorations and late renewals: If a mark is removed for non-renewal, we assist with restoration applications and payment of the relevant fees.
- Advising on protection and enforcement: We offer strategic guidance on trademark registration, brand protection and enforcement measures against infringement.
Need legal guidance?
For support with trademark registration, renewal or related intellectual property matters, please contact:
Contributor
Mercy Chore, Associate – IP & TMT Unit
Or reach our Commercial & TMT Practice Team at: commercial@cmadvocates.com
Disclaimer: This publication is for informational purposes only and does not constitute legal advice. For tailored legal support, please consult our team.