Section 8 of Trade Marks Act CAP 506: Right given by registration in Part B, and infringement thereof
(1) Except as provided by subsection (2), the registration (whether before or after the commencement of this Act) of a person in Part B of the register as proprietor of a trade mark if valid gives to that person the same right and the provisions of section 7 shall have effect in the same manner in relation to a trade mark registered in Part B of the register as they have effect in relation to a trade mark registered in Part A of the register.
(2) In any action for infringement of the right to the use of a trade mark given by registration in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 9, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connexion in the course of trade between the goods and some person having the right either as proprietor or as licensee to use the trade mark or in respect of services that a person having the right either as proprietor or as licensee to use the trade mark is connected in the course of business with the provision of the services.
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- Section 9 - Infringement by breach of certain restrictions
(1) Where, by a contract in writing made with the proprietor or a licensee of a registered trade mark, a purchaser or owner of goods or a person performing the services, enters into an obligation to...
- Section 10 - Saving for vested rights
Nothing in this Act shall entitle the proprietor or a licensee of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in...
- Section 11 - Saving for use of name, address or description of goods
No registration of a trade mark shall interfere with—
(a) any bona fide use by a person of his own name or of the name of his place of business, or of the name, or of the name of the place of...
- Section 12 - Distinctiveness requisite for registration in Part A
(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars—...
- Section 13 - Capability of distinguishing requisite for registration in Part B
(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of...
- Section 14 - Prohibition of registration of deceptive, etc., matter
(1) 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...
- Section 15 - Prohibition of registration of identical and resembling trade marks
(1) Subject to the provisions of subsection (2), no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a...
- Section 15A - Protection of well-known trade marks
(1) References in this Act to a trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well known trade mark, are to a mark which is well known in Kenya as...
- Section 16 - Registration in Part A to be conclusive as to validity after seven years
(1) In all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 35) the original registration in Part A of the register of the trade...
- Section 17 - Registration subject to disclaimer
If a trade mark—
(a) contains any part not separately registered by the proprietor as a trade mark; or
(b) contains matter common to the trade or to the provision of services of that description or...
- Section 18 - Words used as name or description of an article or substance
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of the registration, of a word or words which the trade mark contains, or of...
- Section 19 - Effect of limitation as to colour, and of absence thereof
(1) A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the court or the...
- Section 20 - Application for registration
(1) A person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for...
- Section 21 - Opposition to registration
(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause...
- Section 22 - Registration
(1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either—
(a) the application has not been opposed and the time for notice of...
- Section 23 - Duration and renewal of registration
(1) The registration of a trade mark shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on...
- Section 24 - Registration of part of trade mark and of trade marks as a series
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and any such part as separate trade...
- Section 25 - Powers of, and restrictions on, assignment and transmission
(1) A registered trade mark is assignable and transmissible either in connection with the goodwill of a business or not.
(2) A registered trade mark is assignable and transmissible in respect of...
- Section 27 - Power of registered proprietor to assign and give receipts
Subject to the provisions of this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any...
- Section 28 - Registration of assignments and transmissions
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of...
- Section 29 - Removal from register and imposition of limitations on ground of non-use
(1) Subject to the provisions of section 30, a registered trade mark may be taken off the register in respect of any of the goods or services in respect of which it is registered on application by any...
- Section 30 - Defensive registration of well-known trade marks
(1) Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used...
- Section 31 - Registered users
(1) Subject to the provisions of this section, a person other than the proprietor of a trade mark may be registered as a licensee thereof in respect of all or any of the goods in respect of which it...
- Section 32 - Proposed use of trade mark by corporation to be constituted, etc.
(1) No application for the registration of a trade mark in respect of any goods or services to be performed shall be refused, nor shall permission for such registration be withheld, on the ground only...
- Section 33 - Use of one of associated or substantially identical trade marks equivalent to use of another
(1) Where under this Act use of a registered trade mark is required to be proved for any purpose, the court or the Registrar may, if and so far as the court or the Registrar thinks right, accept use...
- Section 34 - Use of trade mark for export trade
The application in Kenya of a trade mark to goods to be exported from Kenya, and any other act done in Kenya in relation to goods to be so exported or services to be performed outside which, if done...
- Section 35 - General power to rectify entries in register
(1) Any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the...
- Section 36 - Power to expunge or vary registration for breach of condition
On application by any person aggrieved to the court, or, at the option of the applicant and subject to the provisions of section 53, to the Registrar, or on application by the Registrar to the court,...
- Section 36A - Surrender of a registered trade mark
(1) A proprietor may surrender a registered trade mark in respect of some or all of the goods or services for which it is registered.
(2) The Cabinet Secretary may make rules for the surrender of a...
- Section 36B - Effect of Acquiescence
(1) A proprietor of an earlier trade mark or any other earlier right, who has acquiesced for a continuous period of five years in the use of a registered trade mark in Kenya, being aware of that use,...
- Section 37 - Correction of register
(1) The Registrar may, on request made in the prescribed manner by the registered proprietor—
(a) correct any error in the name, address or description of the registered proprietor of a trade...
- Section 38 - Alteration of registered trade mark
(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identify...
- Section 39 - Adaptation of entries in register to amended or substituted classification of goods
(1) The Cabinet Secretary may from time to time make such rules, prescribe such forms and generally do such things as he thinks expedient, for empowering the Registrar to amend the register, whether...
- Section 40 - Certification trade marks
(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other...
- Section 40A - Collective trade marks
(1) A mark capable of distinguishing, in the course of trade, the goods or services of persons who are members of an association, from goods or services of persons who are not members of such...
- Section 40B - Marks registered under the Banjul Protocol and the Madrid Convention and Protocol
In this Part—
"International Bureau" means the International Bureau of the World Intellectual Property Organization, established by the convention signed at Stockholm on the 14th July,...
- Section 40C - Rules regarding regional and international applications
(1) The Cabinet Secretary may, in rules, make appropriate provisions to give effect, in Kenya, to the provisions of the Banjul Protocol and the Madrid Agreement and the Madrid Protocol.
(2) The rules...
- Section 40D - Applications for registration of marks under the Banjul Protocol
(1) A trade mark in respect of which Kenya is a designated state, registered by ARIPO by virtue of the Banjul Protocol, shall have the same effect and enjoy the same protection in Kenya, as a trade...
- Section 41 - Power of Cabinet Secretary to make rules
The Cabinet Secretary may make such rules, prescribe such forms and generally do such things as he thinks as he thinks expedient—
(a) for regulating the practice under this Act, including the service...
- Section 42 - Fees
There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Cabinet Secretary.
- Section 43 - Preliminary advice by Registrar as to distinctiveness
(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima...
- Section 44 - Hearing before exercise of Registrar’s discretion
Where any discretionary or other power is given to the Registrar by this Act or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of...
- Section 45 - Power of Registrar to award costs
(1) In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they...
- Section 46 - Registration to be prima facie evidence of validity
In all legal proceedings relating to a registered trade mark (including applications under section 35), the fact that a person is registered as proprietor of the trade mark shall be prima facie...
- Section 47 - Certificate of validity
In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the court may certify to...
- Section 48 - Costs of Registrar in proceedings before court, and payment of costs by Registrar
In all proceedings before the court under this Act, the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the...
- Section 49 - Trade usage, etc., to be considered
In any action or proceeding relating to a trade mark or trade name, the court or the Registrar shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or...
- Section 50 - Registrar’s appearance in proceedings involving rectification
(1) In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed...
- Section 51 - Court’s power to review Registrar’s decision
The court, in dealing with any question of the rectification of the register (including all applications under the provisions of section 35), shall have power to review any decision of the Registrar...
- Section 52 - Discretion of court in appeals
In any appeal from a decision of the Registrar to the court under this Act, the court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.