Introduction: The Rising Threat of Counterfeiting
Counterfeiting and illicit trade pose a significant and growing challenge to businesses operating in Kenya. Data from a 2018 survey on ‘Counterfeits and other Forms of Illicit Trade in Kenya’ by the Anti-Counterfeit Authority (ACA) highlighted the severity of this issue, indicating that counterfeits were responsible for 77% of total business losses reported that year. This figure represented an increase in illicit trade compared to 2017.
International trade statistics further underscore the expanding scale of the problem. The total value of illicit trade saw a 14% rise, increasing from KES 726 billion in 2017 to KES 826 billion in 2018. The prevalence of illicit products and counterfeits continues to necessitate robust brand protection measures.
Defining Counterfeiting and Brand Value
The Anti-Counterfeit Act of 2008 defines counterfeiting as various actions, including the manufacture, production, packaging, labeling, and distribution of goods. These goods are identical, confusingly similar, or substantially similar to items protected under a registered trademark, and are produced without the authorization of the registered owner. Globally, trade in counterfeits is often treated as an organized crime.
A company’s brand is one of its most valuable assets. Consumers typically associate a product’s quality with its brand identity. For example, purchasers of Bata Shoes link the quality of the footwear directly to the Bata brand. Consequently, a strong brand can lead to increased purchase power and market trust. Effective brand protection is therefore essential for sustainable business success. Fundamentally, a brand functions as an identifying mark for products, serving to distinguish a company’s offerings from those of its competitors.
The Imperative of Brand Protection
The primary importance of protecting a brand is ensuring that a company’s products are easily identifiable and distinguishable from competitor offerings. This protection helps a business build goodwill with its customers, which, in turn, fosters loyalty and leads to increased revenue generation.
Brand protection involves safeguarding a company’s intellectual property rights against infringement by counterfeiters and pirates. The most effective way to secure this protection is by registering a trademark. Registering a trademark grants the company the exclusive legal right to prevent other parties from marketing identical or similar products under the same mark, or a confusingly similar mark.
What Constitutes a Registerable Trademark?
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can be a word, symbol, design, or a combination of these elements. The Trademarks Act (Cap 506) comprehensively describes a mark as including a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter, or numeral, or any combination of these, whether rendered in two-dimensional or three-dimensional form.
A trademark may consist of one or more distinctive words, letters, numbers, drawings, pictures, signatures, colors, or a combination thereof. A Service Mark is a specific type of sign used to distinguish the services of one entity from another and shares similar characteristics with a general trademark. Examples of common trademarks include “KTN” for The Standard Group and “OMO” for the Unilever Group.
Trademark Registrability Requirements
Trademark registration in Kenya is governed by the Trademarks Act, Chapter 504, Laws of Kenya. The Kenya Industrial Property Institute (KIPI), which operates under the Industrial Property Act 2001, is the body responsible for examining and granting patents and trademarks within the country.
For a mark to be deemed registrable, it must satisfy specific requirements:
- The applicant for the trademark registration must be a company, firm, or individual represented in a special or particular manner.
- The mark must be an invented word or invented words.
- It should be a word or words that have no direct reference to the character or quality of the goods, and must not be a geographical name or a surname in its ordinary significance.
- The mark must be distinctive.
Crucially, a mark cannot be registered if it is identical with or nearly resembles a mark already registered concerning the same goods or services. It is strongly advised that a search be conducted before submitting an application for registration to confirm that a similar mark does not already exist on the official register of trademarks. Once the search confirms availability, the company can then proceed with an application to KIPI.
