Why Your Brand Name Could Be at Risk — Even If You’ve Been Using It for Years
You built your business. You chose your name carefully, invested in branding, built a reputation — and then one day you discover that someone else has registered your trade mark. Or, on the other side of the equation, you diligently registered a mark, only to face a legal challenge from a competitor claiming they were using it first.
Both scenarios play out with surprising frequency in Kenya’s commercial landscape, and the legal consequences are significant. Understanding how trade mark registration works — and how the expungement process operates when prior use is in dispute — is not just a matter of intellectual property housekeeping. It is a business-critical competency.
This article explains the trade mark registration process in Kenya, the legal doctrine of prior use, and the specific mechanism by which a registered trade mark can be challenged and removed from the register on the basis of that prior use. It also explains what both sides — the challenger and the registered proprietor — need to know to protect their position.
What Is a Trade Mark Under Kenyan Law?
A trade mark is a sign — which may be a word, name, logo, device, colour, shape, or combination of these — that distinguishes the goods or services of one enterprise from those of others. In Kenya, trade marks are governed primarily by the Trade Marks Act, Cap. 506 of the Laws of Kenya, supplemented by the Industrial Property Act, No. 3 of 2001 in respect of certain overlapping IP rights, and Kenya’s obligations under international frameworks including the Paris Convention for the Protection of Industrial Property (to which Kenya is a signatory).
The administrative authority for trade mark registration in Kenya is the Kenya Industrial Property Institute (KIPI), established under the Industrial Property Act and operating under the mandate of the Ministry responsible for Trade.
A registered trade mark gives its proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered, and the right to take legal action against any person who uses the same or a confusingly similar mark without authority. Registration is prima facie proof of ownership and creates a statutory monopoly that is enforceable across Kenya.
The Trade Mark Registration Process in Kenya
Step 1 — Trade Mark Search
Before filing an application, the first — and often most overlooked — step is conducting a trade mark availability search at the KIPI Trade Marks Registry. A clearance search checks whether an identical or confusingly similar mark already exists on the register in the same or related class of goods or services.
Skipping this step is a costly mistake. Filing without a search exposes an applicant to objection, opposition, and the loss of application fees. KNK Advocates routinely advises clients that a professional pre-filing search is not optional — it is the foundation of a sound IP strategy.
Step 2 — Classification of Goods or Services
Trade marks are registered against specific classes of goods or services, organised under the NICE Classification system (currently in its 12th edition), which Kenya follows. There are 45 classes in total — Classes 1–34 cover goods, and Classes 35–45 cover services.
An applicant must identify the correct class or classes. A mark registered only in Class 25 (clothing) does not provide protection in Class 35 (retail services) or Class 16 (printed materials). Businesses operating across multiple sectors should consider filing in multiple classes from the outset.
Step 3 — Filing the Application
Applications are filed with KIPI using the prescribed Form TM2 accompanied by:
- A representation of the trade mark (the mark as it will appear)
- A list of the goods or services to be covered
- The applicant’s full details (individual, company, or firm)
- Payment of the prescribed filing fees
Applications can be filed directly at the KIPI offices in Nairobi or, increasingly, through the KIPI online portal. Foreign applicants without a place of business in Kenya must file through a locally registered agent — typically an advocate or IP practitioner.
Step 4 — Examination by KIPI
Once filed, KIPI’s Examiners conduct a formal and substantive examination of the application. They assess:
- Whether the mark is distinctive and capable of registration
- Whether it is devoid of distinctiveness, descriptive, deceptive, or contrary to public policy (grounds for refusal under Section 15 of the Trade Marks Act)
- Whether it conflicts with an earlier mark already on the register
If the Examiner raises objections, the applicant or their advocate is given the opportunity to respond, argue the case for distinctiveness, or amend the application.
Step 5 — Publication in the Kenya Gazette
If the application passes examination, it is advertised in the Kenya Industrial Property Journal (the official IP gazette). This is the critical window during which third parties — including competitors and prior users — may oppose the registration.
The opposition window is two months from the date of publication, though extensions may be granted. This is the primary moment at which a person with a prior use claim should act. Failure to oppose at this stage does not extinguish prior use rights entirely, but it makes the subsequent expungement process more complex and costly.
Step 6 — Registration
If no opposition is filed within the opposition period, or if any opposition filed is resolved in the applicant’s favour, KIPI proceeds to register the mark. A Certificate of Registration is issued, and the mark appears on the Trade Mark Register. Registration is initially valid for ten years from the date of application, and is renewable for further ten-year periods upon payment of renewal fees.
The Doctrine of Prior Use in Trade Mark Law
Kenya’s trade mark law is rooted in the common law tradition, and one of the most important common law principles in this context is the doctrine of prior use. This doctrine recognises that a person who has been using a trade mark in commerce before another party — whether or not that earlier user has registered the mark — may have acquired enforceable rights in the mark simply through that use.
Prior use rights are anchored in the legal concept of goodwill: the value attached to a mark by virtue of the reputation and public recognition it has built in the marketplace. A business that has been trading under a particular name or logo for years, and has built customer recognition around that mark, has a legitimate interest in that mark — even in the absence of formal registration.
Under Section 13 of the Trade Marks Act, Cap. 506, the Registrar and the courts recognise that a prior user may have a better title to a mark than a later registrant, particularly where the later registrant knew of, or was clearly aware of, the earlier user’s mark at the time of applying for registration.
What Is Expungement?
Expungement (also referred to as removal or cancellation) is the legal process by which a registered trade mark is struck off the Trade Marks Register. In Kenya, the power to expunge a mark rests both with the Registrar of Trade Marks at KIPI and with the High Court of Kenya (specifically the Intellectual Property Division).
The grounds for expungement under the Trade Marks Act include:
- Non-use — the mark has not been used for a continuous period of five years or more (Section 35)
- Contravention of the Act at registration — the mark should not have been registered in the first instance
- Prior use — a party with an earlier and superior claim to the mark challenges the registration on the basis of prior use and acquired goodwill
- Fraud on the Registry — the application was obtained by misrepresentation
This article focuses on the prior use ground, which is the most commercially significant and the most commonly litigated basis for expungement in Kenya.
Expungement Based on Prior Use: The Legal Mechanism
Who Can Apply?
Any person who can demonstrate that they have been using the same or a confusingly similar mark in the course of trade prior to the date of application by the registered proprietor may apply for expungement. The applicant need not be a registered proprietor of the mark — their prior use in commerce is itself the foundation of the claim.
Where to File
An application for expungement based on prior use may be filed:
- Before the Registrar of Trade Marks (KIPI) — using the prescribed form and procedure, suitable for clear-cut cases or where both parties consent
- In the High Court of Kenya — where the matter is more complex, involves significant commercial interests, or where the parties are already engaged in related litigation such as a passing off action
The High Court has original and appellate jurisdiction over trade mark matters, and decisions of the Registrar may be appealed to the High Court.
What Must the Prior User Prove?
To succeed in an expungement application based on prior use, the applicant must establish, on a balance of probabilities:
1. Genuineness and continuity of prior use The applicant must show that the mark was actually used in commerce — not merely intended for use — before the date on which the registered proprietor applied for registration. Evidence may include sales records, invoices, photographs, advertising materials, social media content, testimonials from clients, and banking records showing turnover under the mark.
2. The mark was used in relation to the same or similar goods or services Prior use of the mark in an entirely unrelated field may carry less weight. The closer the overlap in the goods or services, the stronger the prior use claim.
3. The mark has acquired distinctiveness and goodwill Mere casual use is not sufficient. The applicant must show that the mark has come to be associated in the minds of the relevant public with their goods or services — that it has built a reputation. A start-up that registered its name last week cannot defeat a company that has been trading under the same name for fifteen years with a loyal customer base.
4. A likelihood of confusion Where the marks and the goods or services are sufficiently similar that the public is likely to be confused as to their commercial origin, the registered mark is more vulnerable to expungement on prior use grounds.
Practical Example: The Nairobi Restaurant Scenario
Consider this scenario: A popular restaurant in Westlands, Nairobi, has been operating as “Savannah Kitchen” since 2015, building a strong local following. The owner never registered the trade mark. In 2023, a different operator in Mombasa applies for and obtains registration of “Savannah Kitchen” for restaurant services (Class 43).
The Westlands restaurant owner discovers the registration and approaches KNK Advocates. The owner has invoices, social media pages, press mentions, lease agreements, and bank statements all confirming over eight years of continuous trade under the “Savannah Kitchen” name. This evidence — properly compiled and presented — forms the foundation of an expungement application. The Mombasa registrant, who cannot demonstrate prior knowledge of the Westlands business, faces a strong challenge. If the Registrar or High Court finds that the Westlands owner’s prior use predates the application and that goodwill has been established, the registration will be expunged.
The Expungement Process Step by Step
1. Cease and Desist / Demand Letter
Before formal proceedings, the prior user’s advocates typically send a demand letter to the registered proprietor, setting out the basis of the prior use claim and inviting the proprietor to voluntarily surrender or limit the registration. This step is commercially pragmatic — it may resolve the dispute without the cost and delay of formal proceedings.
2. Filing the Application
If the matter does not resolve, the prior user’s advocates file a formal expungement application before KIPI or the High Court. At KIPI, the application is filed using Form TM26 (or the current prescribed form), supported by a statement of grounds and evidence.
3. Service on the Registered Proprietor
The registered proprietor is served with the application and given the opportunity to file a counter-statement defending the registration.
4. Evidence Rounds
Both parties file evidence in support of their positions. The applicant files first, the registered proprietor responds, and the applicant may file in reply. This is the most critical stage — the quality and volume of prior use evidence is frequently determinative.
5. Hearing
KIPI or the Court conducts a hearing at which both sides present arguments. Legal representation by experienced IP advocates is strongly recommended at this stage.
6. Decision
The Registrar or Court issues a decision. If the expungement application succeeds, the mark is removed from the register either wholly or in respect of the specific goods or services in dispute. If it fails, the registration is maintained and the applicant may be ordered to pay the respondent’s costs.
7. Appeal
Either party may appeal a KIPI decision to the High Court, and a High Court decision may be challenged in the Court of Appeal on a point of law.
In Kenya, trade marks are registered through the Kenya Industrial Property Institute (KIPI) under the Trade Marks Act, Cap. 506. A registered mark can be removed from the register through a legal process called expungement where another party demonstrates superior prior use of the same or a confusingly similar mark. Prior use can defeat registration even if the challenger has never registered the mark.
Common Mistakes That Weaken Your Position
For Prior Users
- Failing to keep evidence of use — no invoices, no advertising records, no documentation of how long and how extensively the mark has been used
- Delayed action — waiting too long after discovering the registration, which can weaken the equitable strength of the claim
- Missing the opposition window — not opposing the mark during the gazette publication period when the threshold for challenging it is lower
For Registered Proprietors
- Not conducting a proper pre-filing search — registering a mark that is already in use invites a costly expungement battle
- Registering with knowledge of a prior user — this can amount to bad faith, which is an independent ground for expungement
- Allowing the mark to lapse through non-use — a registration that is not actively used for five consecutive years is vulnerable to removal even without a prior use claim
What KNK Advocates Recommends
Intellectual property rights, once lost, are difficult to recover. At Khayesi & Khayesi Advocates LLP, we advise businesses — from early-stage enterprises to established corporates — to treat trade mark registration as a foundational commercial investment, not an afterthought.
Our specific recommendations are:
Register early. The moment you settle on a trading name, logo, or product mark, conduct a clearance search and file. Registration creates certainty and puts the commercial world on notice.
Document your use. Whether or not you are registered, maintain a contemporaneous record of your trade mark use — save advertising materials, invoices, photographs, social media archives, and client communications that establish when you started using the mark and how extensively it has been used.
Act quickly on discovery. If you discover a conflicting registration, do not wait. The opposition window is only two months from publication in the Kenya Industrial Property Journal. After registration, expungement is still available, but the process is more involved. Early intervention is always cheaper.
Seek specialist IP advice. Trade mark law is nuanced. The strength of a prior use claim depends on the quality of evidence, the similarity of the marks, the overlap of the goods or services, and the relative periods of use. These assessments require legal expertise grounded in Kenyan IP practice. Our Intellectual Property Law team at KNK Advocates has the depth of knowledge to advise you on the strength of your position and represent you at every stage.
Conclusion
Trade mark registration in Kenya is a structured, KIPI-administered process that gives registered proprietors powerful commercial and legal rights. However, registration is not an absolute shield. A party with a genuine, prior, and sustained use of a mark can challenge a later registration through the expungement process — and where the evidence of prior use is strong, the challenge can succeed.
For businesses in Kenya, the lesson is clear: register early, document your use from day one, and take swift legal advice if a conflict arises. The trade mark register is a public asset that rewards those who engage with it diligently — and exposes those who do not.
At Khayesi & Khayesi Advocates LLP, we know the law, and we love the law. Whether you are building a brand, defending one, or challenging a registration that should not have been granted, we are here to move you forward. Visit knkadvocates.co.ke to learn more about our Intellectual Property Law practice or General Litigation services.
Frequently Asked Questions
1. How long does trade mark registration take in Kenya? The process from filing to registration typically takes between 18 months and 36 months at KIPI, depending on examination queues, whether objections are raised, and whether third parties file oppositions. Businesses should not wait for registration before using a mark — use can begin from the date of application, and the application date establishes priority. KNK Advocates can guide you through the process and manage your application on your behalf.
2. Can I use a trade mark in Kenya without registering it? Yes. Common law rights arise through use, and Kenya recognises the tort of passing off, which protects the goodwill in an unregistered mark. However, unregistered rights are harder and more expensive to enforce — you must prove your reputation every time. Registration creates a statutory presumption of ownership. KNK Advocates recommends that all businesses register their marks as soon as practicable.
3. What is the difference between opposition and expungement? Opposition occurs before registration, during the two-month gazette publication period. Expungement occurs after registration and involves removing a mark already on the register. Opposition is generally cheaper and easier to pursue. Expungement requires separate proceedings before KIPI or the High Court. If you discover a conflicting application during the gazette period, opposition is the more cost-effective route.
4. How do I prove prior use of a trade mark in Kenya? Evidence of prior use typically includes: dated invoices and receipts bearing the mark, advertising materials (digital and print), social media account history, press coverage, lease agreements or business registration documents showing the trading name, bank statements reflecting turnover under the mark, and customer testimonials. The more contemporaneous and consistent the evidence, the stronger the claim. KNK Advocates regularly assists clients in compiling and presenting prior use evidence for KIPI and High Court proceedings.
5. Can a foreign company claim prior use in Kenya? Yes, to a limited extent. Kenya is a signatory to the Paris Convention, which confers convention priority — a foreign applicant who has filed in their home country can claim priority for up to six months. However, for general prior use claims in expungement proceedings, the use must have a sufficient commercial nexus to Kenya, not merely to a foreign market. This is a nuanced area, and KNK Advocates can advise on the strength of a foreign company’s prior use claim in the Kenyan context.
6. What happens if my expungement application succeeds? The registered mark is removed from the Trade Marks Register, either wholly or in respect of the contested goods or services. The registered proprietor loses the statutory rights associated with that registration. The applicant — who has established prior use — may then apply to register their own mark, now free of the conflicting registration. The applicant may also pursue related remedies such as passing off damages for any losses suffered due to the improper registration.
7. Can I register a trade mark that has already been expunged? Yes. Once a mark is expunged and removed from the register, the legal barrier it created is lifted. A prior user who successfully obtains expungement of a conflicting mark is free to apply for registration of their own mark. That application will then go through the normal examination and gazette process.
⚠️ Legal Disclaimer
The content of this article is published by Khayesi & Khayesi Advocates LLP for general informational and educational purposes only. It does not constitute legal advice and must not be relied upon as such.
Reading this article does not create an advocate-client relationship between you and Khayesi & Khayesi Advocates LLP or any of its advocates. The information provided reflects Kenyan law as at the date of publication and may not account for subsequent legislative changes, court decisions, or the specific facts of your situation.
Legal advice is fact-specific. A position that applies generally may not apply to your circumstances. To receive formal legal advice on your matter, you must formally engage Khayesi & Khayesi Advocates LLP by entering into a signed Letter of Engagement, at which point an advocate-client relationship will be established and privileged legal advice can be provided.
To begin the engagement process, contact us at [email protected], call +254 711 472 518, or book a free consultation.
Need Expert Intellectual Property Legal Advice in Kenya?
Khayesi & Khayesi Advocates LLP (KNK Advocates) is a full-service law firm based in Nairobi, Kenya, with more than 25 years of combined experience in Intellectual Property Law, Commercial & Corporate Law, and General Litigation.
We Know The Law, We Love The Law.
Whether you are registering a trade mark for the first time, defending a registration under challenge, or asserting your prior use rights against a conflicting mark, our team is here to move you forward.
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