TRADEMARK ASSIGNMENT OR TRANSMISSION IN KENYA

Introduction

Trademark assignment refers to the transfer of ownership rights in a registered trademark from one party (the assignor) to another (the assignee). Unlike licensing, which merely grants usage rights, assignment permanently transfers all proprietary rights, including goodwill, to the new owner. The legal foundation for trademark assignment is found in Part IV of the Trade Marks Act (Cap 506, Laws of Kenya), specifically Sections 25 to 28. Section 25 provides that a registered trademark is assignable and transmissible either with or without the goodwill of a business, and either in respect of all or some of the goods or services for which it is registered. Importantly, subsection (4) restricts assignments that would result in multiple parties holding exclusive rights to identical or nearly resembling marks in relation to the same goods or services, where such use would likely cause confusion. The Act, however, allows exceptions where limitations are imposed to prevent overlap in the Kenyan market or in export markets. Section 27 further affirms the power of the registered proprietor to assign a trademark and to give effectual receipts for consideration, while Section 28 requires that any person acquiring rights by assignment or transmission must apply to the Registrar to register their title, with particulars of the assignment entered into the register.

Procedure for trademark assignment in Kenya

Trademark assignment is administered by the Kenya Industrial Property Institute (KIPI). Either the registered proprietor or the assignee, through themselves or an authorized agent, may file the application. The procedure begins with the preparation of a Deed of Assignment, this is a written agreement signed by both parties (assignor and assignee), clearly identifying the trademark registration number, the goods or services covered, and the scope of the transfer. This deed must then be accompanied by prescribed forms, notably Form TM 14 for Request to register Assignment or transmission, together with supporting documents such as a certified copy of the trademark certificate and, where applicable, a power of attorney through form TM 1 if filed by an agent/advocate.

It is also important to note that where an agent is used, stamp duty on TM 1 form must be paid.

The information required for registration includes the full details of both assignor and assignee, including names, addresses (email and p.o box number), and nationality if indivuduals or incorporation certificate if juristic persons, as well as a description and class of the goods or services associated with the trademark. Once the application is lodged with KIPI, the Registrar examines it for compliance with statutory requirements. If satisfied, the assignment is entered into the register and subsequently published in the Industrial Property Journal, thereby giving notice to the public of the change in ownership.

The Act also underscores the importance of registration by providing that unregistered assignments cannot be admitted in evidence in court to prove title, except between the parties to the document, unless the court directs otherwise.

The cost of registering a trademark assignment is prescribed under KIPI’s fee schedule. Filing fees for TM 14 an application to register an assignment or transmission application for first class is KES 3,000 for local applicants and USD 150 for foreign applicants. For each subsequent class KES 2,000 for local applicants and USD 100 for each subsequent class for foreign applicants.

It is also important to note that, when assigning a series of trade marks under section 24(3) of the Act, the same shall be deemed to be a single trademark for the purpose of calculating fees, except where otherwise indicated.

The timeline for registration of an assignment or transmission typically depends on the completeness of the documentation and whether any objections or clarifications are raised by the Registrar. Section 25(7) further requires that where an assignment is made otherwise than in connection with goodwill, the assignee must apply within six months for directions on advertisement, and the assignment must be advertised in the manner directed by the Registrar.

Types of Trademark Assignment in Kenya

Trademark assignment in Kenya can take several forms depending on the scope of rights transferred and whether goodwill is included. A FULL ASSIGNMENT involves the transfer of all rights and interests in the trademark to the assignee, who then becomes the exclusive owner with complete freedom to use, transfer, or license the mark without requiring approval from the original proprietor. A PARTIAL ASSIGNMENT allows the transfer of rights only in respect of certain goods or services for which the trademark is registered, meaning the assignor retains rights over the remaining goods or services. An assignment with goodwill refers to the transfer of the trademark together with the reputation, customer base, and commercial value associated with it, thereby enabling the assignee to continue benefiting from the established market recognition.

In conclusion, it is important to note that trademark assignment must be carefully structured to avoid misleading the public, particularly in cases of partial assignments where identical marks may be split between different businesses. Foreign assignments often require notarization and legalization of documents before filing. Ultimately, the registration of a trademark assignment in Kenya provides legal certainty, secures the assignee’s rights, and ensures that the trademark continues to serve its essential function of distinguishing goods and services in the marketplace, in line with the statutory safeguards under Sections 25 to 28 of the Trade Marks Act.

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

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