A ground-breaking case dealing with the concept of “Well Known” mark as set out in the WTO TRIPS Agreement and the Paris Convention, is underway before the Kenyan Registrar of Trade Marks, IP Kenya has learnt.
X filed an application to register a certain trademark which went on to the advertisement stage. This was opposed by Y. Y has not registered its mark in Kenya, but pleads that the mark is “well known”. Under the Trade Mark Rules of Kenya, a period of 60 days must elapse from the time of advertisement of an application in the Intellectual Property Journal published by the Kenya Industrial Property Institute, to the time the mark is finally registered. Opposition proceedings can be launched during the 60-day period.
Rule 46 states: “Any person may, within sixty days from the date of any advertisement in the Journal or Kenya Gazette of an application for registration of a trade mark give notice in form TM 6 to the Registrar of opposition to the registration”
It is hoped that the case will attempt to define parameters of the concept of “Well Known” mark in Kenya, and East Africa in general. Section 15A of the Kenyan Trade Marks Act domesticates the provisions of TRIPS and the Paris Convention, in relation to the “Well Known” mark concept. This is an area that has not been much litigated upon and the decision in this case is certainly bound to create new frontiers in the Kenyan Trademark law, especially as it relates to international treaties to which Kenya is party.
By David B Opijah in Nairobi, Kenya
