SAFEGUARDING YOUR BRAND’S VALIDITY AND ENFORCEMENT RIGHTS
In Kenya’s business landscape, trade marks are invaluable assets symbolizing brand reputation, consumer trust, and market differentiation. Many businesses engage in licensing agreements to expand their reach, franchise operations, or collaborate with third-party manufacturers. However, a common oversight with serious legal consequences is the failure to record these licenses with the Kenya Industrial Property Institute (KIPI).
Although Kenya’s trade mark laws do not mandate license recordal, neglecting this step can jeopardize a trade mark’s validity and weaken enforcement capabilities. In a market where counterfeiters and trade mark squatters increasingly target established brands, proactively recording licences is no longer optional but it is a business imperative.
This article explains why recording licenses is a strategic necessity, the risks of non-compliance, and practical steps to ensure full legal protection.
1. Vulnerability to Cancellation for Non-Use
Under Section 36 of Kenya’s Trade marks Act, a mark can be cancelled on grounds of non-use where a mark has not been in use for a continuous period of five years or longer after its registration and up to one month prior to the date of the application for cancellation of the trade mark.
However, if the trade mark has been used by a registered licensee, that use is deemed equivalent to use by the registered proprietor. This means that recording the licence with the KIPI helps shield the mark from cancellation based on non-use.
Conversely, if the licensee is not recorded, their use of the mark is not recognized as use by the proprietor. This distinction can have serious consequences for maintaining the validity of the mark, especially where a brand is primarily used by licensees rather than the proprietor itself.
2. Limited Enforcement Rights for Licensees
Another reason for recording a trade mark licence is to strengthen the licensee’s legal standing. A registered licensee is entitled to initiate infringement proceedings against third parties, on behalf of the registered proprietor. This gives the licensee a layer of protection and autonomy, especially in markets like Kenya where counterfeiting or infringement is common.
3. Enhances Commercial Credibility
Recordal of licences with KIPI adds an extra layer of credibility. Licensed users are listed in the public register, which increases transparency for investors, business partners, financial institutions, and potential acquirers. It also demonstrates a proactive and well-managed IP strategy.
4. Avoids Disputes Over Control
The Registrar requires license agreements to include control clauses. These ensure that the proprietor maintains oversight of how the trade mark is used. Such control helps maintain brand quality and reduces the risk of dilution or reputational harm.
Licence Agreement Requirements
While there is no prescribed format for a trade mark licence agreement in Kenya, the law requires that the agreement contain:
- A clause on consideration, i.e., confirmation that the licence is granted in return for some form of payment or value;
- Adequate provisions enabling the proprietor to exercise control over the licensee’s use of the trade mark. This includes quality control provisions to ensure consistent brand standards and reputation management.
A registered license is not just a formality. It is the shield that keeps your trade mark alive and enforceable. While optional, the recordal of trade mark licences in Kenya is a prudent and valuable step in safeguarding trade mark rights, avoiding cancellation risks, and ensuring effective enforcement. Proprietors and licensees alike should consider formalizing and recording their licensing arrangements not just for compliance, but for stronger, more defensible brand protection.
For more information or assistance with the protection of your brand, please contact us at info@cfllegal.com
