REGISTRATION OF TRADEMARKS AS A SERIES IN KENYA

Registration of trademarks as a series in Kenya allows proprietors to protect multiple variations of a mark under a single application, provided the marks are substantially similar and differ only in non-distinctive elements such as color, punctuation, or minor variations in representation. This mechanism is particularly useful for businesses that use a family of marks with slight differences but wish to avoid filing separate applications for each.

In Kenya, registration of trademarks as a series is provided for under section 24 of the Trade Marks Act (Cap 506, Laws of Kenya), this section empowers the Registrar of Trade Marks to accept applications for series marks where the marks resemble each other in material particulars and differ only in minor, non-distinctive features.

The act specifically provides that:

Where a person claiming to be the proprietor of several trade marks, inrespect of the same goods or description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of:-

1. statements of the goods in relation to which they are respectively used or proposed to be used; or
2. statements of number, price, quality or names of places; or
3. other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
4. colour.

seeks to register those trade marks, they may be registered as a series in one registration.

It is also important to note that the trademarks must be registered in respect of particular goods or services classified according to the International Classification of Goods and Services (NICE CLASSIFICATION, 12^th Edition, Version 2023).

To qualify for registration as a series as provided under Section 24, the applicant must demonstrate that

• the marks are essentially the same and that the differences do not substantially affect the identity of the mark. Examples include marks registered in different colors, marks with minor variations in punctuation, or marks with slight differences in non-distinctive elements. (see example below: Note the mark differ in terms of colours (red,green, orange and blue)

• The application must be filed with the Kenya Industrial Property Institute (KIPI) using the prescribed forms, notably Form TM 2 for the application, accompanied by clear representations of each mark in the series.
• The applicant must also provide details of the goods or services to which the marks relate (specify the class or classes), ensuring that the scope of protection is consistent across the series together with details of the proprietor.

The Registrar will then examine the application to confirm that the marks qualify as a series and that their registration would not be contrary to law, morality, or public interest, as emphasized under Section 14, which provides that no person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

In terms of applicable fees, the Act provides that a series of trade marks under section 24(3) shall be deemed to be a single trademark for the purpose of calculating fees, except where otherwise indicated. According to KIPI’s fee schedule, below is the breakdown of applicable fee for registering a trademarks. The fees will vary  depending on the number of classes the mark is to be registered under:

SERVICE	AMOUNT IN KSH	AMOUNT IN USD
Application for search and preliminary advice (FormTM 27)	3000 (for first class) and  2000 (for each subsequent class)	150 for first class and 100 for each subsequent class
Formal application for registration (Form TM 2)	4000 (for first class) and 3000 (for each subsequent class)	200 for first class and 150 for each subsequent class
Appointment as agent (Form TM 1)	1000	50
Advertisement	3000 (for first class) and 2500 (for each subsequent class)	60 for first class and 50 for each subsequent class
Registration	2000 (for first class) and 1500 (for each subsequent class)	150 for first class and 100 for each subsequent class

Applicants should also budget for professional fees if they engage trademark agents/Advoctes to handle the filing. The timeline for registration is similar to that of ordinary trademarks, typically ranging from 4 to 6 months, depending on the completeness of the application, the examination process, and whether any oppositions are filed during publication/advertisement in the Industrial Property Journal.

In conclusion, registering a trademark as a series provides significant commercial advantages, as it allows businesses to secure protection for related variations of a mark without incurring the cost and administrative burden of multiple separate registrations. However, applicants must ensure that the marks truly qualify as a series under the statutory definition, since the Registrar may reject applications where the differences between the marks are deemed substantial. Ultimately, the registration of trademarks as a series in Kenya offers a streamlined and cost-effective means of protecting brand identity, while ensuring compliance with the requirements of the Trade Marks Act and Rules.

For more information or assistance with trademark registration in Kenya, please contact us on info@aowangaadvocates.com or +254794600191

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