Section 36B of Trade Marks Act CAP 506: 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, shall cease to be entitled, on the basis of that earlier trade mark or earlier rights—
(a) to apply for a declaration that the registration of the latter trade mark is invalid; or
(b) to oppose the use of the latter trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the latter trade mark was applied for in bad faith.
(2) Where subsection (1) applies, the proprietor of the latter trade mark shall not be entitled to oppose the use of the earlier trade mark or the exploitation of the earlier right, as the case may be, notwithstanding that the earlier trade mark or right, may no longer be invoked against his latter trade mark.
Enhance Your Research with Bookmarks and Annotations
Here's how you can use these features:
- To bookmark this page, click the "Bookmark this Page" button below the document title.
- To add an annotation, highlight text in the document and select "Add Annotation" from the toolbar that appears.
- These features are great for organizing your research and keeping track of key information.
- You can view and manage your bookmarks and annotations on your Bookmarks and Annotations page.
- 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.
- Section 53 - Procedure in cases of option to apply to court or Registrar
Where under any of the foregoing provisions of this Act an applicant has an option to make an application either to the court or to the Registrar—
(a) if an action concerning in the trade mark in...
- Section 54 - Mode of giving evidence
(1) In any proceeding under this Act before the Registrar, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which the Registrar...
- Section 54A - Nice Agreement receivable in evidence
The Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Trade Marks of 15 June, 1957 and all revisions thereof together with the...
- Section 57 - Falsification of entries in register
If any person makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or...
- Section 58 - Fine for falsely representing a trade mark as registered
(1) Any person who makes a representation—
(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of a...
- Section 58A - Interpretation of terms in Part XI
In this Part—
"apply to," in relation to goods, means—
(a) to emboss, impress, engrave, etch, stamp, write, photocopy or otherwise cause to be applied to or printed upon; or
(b) to weave or...
- Section 58B - Application
(1) A trade mark is applied to goods if—
(a) it is applied to the goods themselves; or
(b) it is applied to a covering on, in or attached to which the goods are sold; or
(c) the goods are placed in...
- Section 58C - Forgery of registered trade mark
For the purpose of this Part, a person forges a registered trade mark if—
(a) without the consent of the proprietor of the registered trade mark or the authority of this Act, he makes that trade mark...
- Section 58D - Prohibition of forgery of registered trade mark
(1) Subject to subsection (2), any person who—
(a) forges a registered trade mark; or
(b) falsely applies a registered trade mark to goods or in relation to services; or
(c) makes a die, block,...
- Section 58E - Prohibition of sale or importation of goods or performance of services with forged registered trade mark
(1) Subject to the provisions of subsection (2), any person who sells or imports any goods or performs any services to which—
(a) a forged registered trade mark is falsely applied; or
(b) a...
- Section 58F - Aiding and abetting offence
Any person who within Kenya procures, counsels, aids, abets or is accessory to the commission outside Kenya of an offence which, if committed within Kenya would be an offence under this Part, is...
- Section 58G - Evidence
(1) Any invoice or other document submitted or used by an importer or any other person in connection with the importation of goods in respect of which a prosecution is brought under this Part may be...
- Section 58H - Forfeiture of goods
(1) On conviction of any person for an offence under this Part, the court may, in addition to any sentence passed, declare any goods in respect of or by means of which the offence was committed to be...
- Section 59 - Restraint of registration and use of Olympic symbol
(1) Subject to an authorisation by or on behalf of the International Olympic Committee, no sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic...
- Section 60 - Change of form of trade connexion not to be deemed to cause deception
The use of a registered trade mark in relation to goods between which and the person using it any form of connexion in the course of trade subsists shall not be deemed to be likely to cause deception...
- Section 61 - Jointly owned trade marks
(1) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except— (a) on...
- Section 62 - Trusts and equities
(1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.
(2) Subject to the provisions of...
- Section 63 - Recognition of agents
(1) Where by this Act any act has to be done by or to any person in connexion with a trade mark or proposed trade mark or any procedure relating thereto, the act may, under and in accordance with the...
- Section 64 - Address for service
When an applicant for the registration of a trade mark or an agent does not reside or carry on business in Kenya, he shall give the Registrar an address for service in Kenya, and if he fails to do so...
- Section 65 - International arrangements
(1) Where any person has registered or has applied for protection for any trade mark in any foreign state with the government of which the Government of Kenya has made arrangements for mutual...
- Section 66 - Provisions as to public holidays
Whenever the last day fixed by this Act, or by any rule for the time being in force, for leaving any document with or paying any fee to the Registrar falls on a Sunday or public holiday, the document...
- Section 67 - Transitional provisions and savings
The transitional provisions and savings set out in the Third Schedule shall have effect with respect to the matters therein mentioned respectively.