The division of trademark applications is long overdue


Ideas & Debate

The division of trademark applications is long overdue


Summary

  • Many countries protect trademarks through their use in the marketplace, even if they are not registered.
  • Before registering a mark, Trademark Offices must be satisfied that the mark is distinctive.
  • The Kenya Industrial Property Institute (KIPI) assigns a unique application number to a multiclass application at the time of filing.

In our daily lives, we are exposed to dozens of brands. We see them on products and their packaging, billboards, TV commercials, social media pages, brochures and flyers, magazine pages, and more.

Large corporations, small and medium-sized businesses, and even individual businesses all recognize the value of brands. A “trademark”, or simply a “trademark”, is a sign capable of distinguishing the goods or services produced or supplied by one company from those of others.

A trademark is protected by registration under applicable trademark laws. Many countries also protect trademarks through their use in the marketplace, even if they are unregistered. Even when a trademark is protected by use, it is advisable to register it as a trademark.

Indeed, such a registration offers stronger protection, in the event of a dispute concerning a mark which would require the intervention of other persons or of a court.

Before registering a mark, Trademark Offices must be satisfied that the mark is distinctive. In addition, the request must properly cover the goods or services, in accordance with the International (Nice) Classification of Goods and Services (Nice Classification).

According to the Nice Classification, there are 45 classes in which goods or services can be registered. A business may seek to protect its trademark in a single class or in multiple classes, depending on the need or the circumstances.

Kenya follows the multi-class application system. Other examples of multi-class regimes include Rwanda and the UK. On the other hand, South Africa, Nigeria, Uganda, mainland Tanzania, and the island of Zanzibar are examples of one-class regimes.

In countries that adopt the single-class filing regime, an applicant can only file one mark in a class of the Nice Classification. Under the multi-class application regime, an applicant can seek protection for a mark in multiple classes of the Nice Classification, all in a single application.

Although at first glance these regimes appear as mere alternatives in the pursuit of trademark protection, they both have a significant impact on the trademark application and registration processes.

The Kenya Industrial Property Institute (KIPI) assigns a unique application number to a multiclass application at the time of filing. Subsequently, the application, although indicating interests in several classes representing several goods or services, is bound under this unique number.

This is different from, for example, single class application regimes where an application for each class must be made separately and given a separate trademark application number.

The multiclass enforcement regime is not without flaws. For example, the processing of an application could be slowed down, in the event of refusal during an automatic examination affecting only one or more of the classes.

A refusal due to a conflict affecting only part of the goods or services of a multiclass request can easily be solved by a practical solution. This is the trademark application division.

This is where a trademark applicant applies to the Registrar for a division of the application for registration (the original or parent application) into two or more separate applications (divisional applications).

The applicant must specify the goods or services to which the divisional application relates, as well as the goods or services which must remain in the main application. Each divisional application is treated as a separate application for registration bearing the same filing date as the initial application.

Once a divisional application is filed, the Registrar must amend the parent application by excluding the goods or services in respect of which the divisional application is filed. This is unless the parent application is outdated.

The pending applications division can provide a solution when the ex officio examination reveals a conflict with an earlier registered mark. That is, only with respect to some of the goods or services forming part of a multi-class trademark application. When dividing an application, the continuation of the non-conflicting classes may continue as divisional applications.

The applicant may then separately seek to resolve the conflict affecting the goods or services in the main application. Unfortunately, the Trademark Law does not provide for the division of trademark applications.

Currently, the only remedy available to a requestor in the event of such a conflict is to delete the class or classes affected by the conflict.

It is therefore necessary to amend the Trademarks Act to provide for the division of trademark applications. As things stand, trademark applicants should basically play with their applications and keep their fingers crossed.

The law should also be amended to allow the applicant for a multiclass trademark application to partially assign it to another party. Currently, there is no provision for the assignment of pending trademark applications. This is a big inconvenience and possibly a limiting hindrance commercially.

Mr. Opijah is Head of Trademarks at Coulson Harney LLP (Bowmans). Mr. Godofa is a lawyer

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