Imagine being told that you can no longer use the term “bora uhai” because the same has been registered as a trademark by a company. Social media would be buzzing with Kenyans exclaiming that the said word ‘belongs to them’ and they should be at liberty to use it freely.
This is the same thing that ensued last year when one of the local dailies published an article stating that Walt Disney Company had been granted a US trademark over the words “Hakuna Matata”. It therefore begs the question, is a company in Kenya barred from using the said words in clothes and footwear apparels that it manufactures? To answer the question; we shall discuss the registration process of a trademark and why a Kenyan Company will not be prevented from trademarking the words “Hakuna Matata”.
However, before we get to the process we need to define the term trademark. It is defined as a sign that is legally registered and serves to distinguish the goods of an industrial or a commercial enterprise or a group of such enterprises. The sign may consist of one or more or a combinations of any of the following elements; distinctive works, letters, numbers, drawings or pictures, monograms, signatures, colours or combination of colours etc. It is imperative to note that one can also trademark the shape of their product. The most famous shape that has been registered is the Coca Cola contour bottle.
First and foremost, trademarks are territorial and they are registered in countries where they need to be protected against infringement. The registration is therefore done at the national or regional or international level depending on the need for protection. At the international level, one has two options: either file a trademark application with the trademark office of each country in which one is seeking protection, or use the World Intellectual Property Organization’s (WIPO’s) Madrid System. Under the national level; one needs to make the application and pay requisite fees to the offices in charge of registration at the national.
For this article we shall focus on registration at the national level. Registration is commenced with a search that is conducted by the office in charge. In Kenya this is done by the Kenya Institute of Intellectual Property (KIPI). The search is done using Form TM 27. The search is conducted to enable the applicant know whether their product or service is registrable or not and also to know if there exists a similar mark that might be confused with their trademark.
Once the search is done, the Applicant proceeds to make the formal application using Form TM 2 which should be accompanied by seven (7) representations of the mark. The documents are examined and if found to be in order the mark will be advertised in the Industrial Property Journal or Kenya Gazette for 60 days. This gives an opportunity to any person who is opposed to the registration of the mark to raise their objection for consideration by the institute.
If the mark is not opposed, it proceeds for registration. The mark will be issued with a registration number that is unique to it. Additionally, the applicant will be issued with a Certificate of Registration bearing the said registration number. The registration will further be entered into the Trade Marks Register.
However, if an opposition is raised, a notice of opposition is filed using Form TM 6 and an opposition hearing begins to determine who can claim ownership of the mark.
Registration of trademarks can be done from the wide category of classes provided by the World Intellectual Property Organization (WIPO). The classes are divided into two main categories; goods and services. The class for goods range from class 1 – 34 whilst the class for services range from class 35 – 45.
For the Kenyan Company that is manufacturing clothing and foot apparels it can register its trademark under class 25. By doing so it prevents any other person or company from registering the same trademark or a similar trademark under the same class in Kenya.
Similarly, the “Hakuna Matata” trademark registered by Disney Enterprises, Inc. is registered under class 25 of the World Intellectual Property Organization (WIPO) category of classes. This protection is only in the USA and not any other country.