Kenya's accession to Madrid system effective at last

The Trademarks (International Registration) Rules 2003 have come into force, making Kenya's participation in the Madrid international trademark registration system effective. The Trademarks (Amendments) Rules, which drastically reduce extension periods in opposition proceedings, came into force at the same time.

Kenya acceded to the Madrid Agreement concerning the international registration of marks and the Madrid Protocol on June 26 1998. However, as neither the agreement nor protocol had been enacted into national law by the date of accession, there were no effective provisions under Kenyan law for international trademark registrations designating Kenya to be processed by the Kenyan registrar of trademarks. Further, there was no effective machinery under which the owner of an international mark for Kenya could restrain the registration or use of a similar mark by another party. In practical terms, international registrations were of no practical value in Kenya and effective protection was only available by means of a national registration.

The implementation on August 23 2002 of the Trademarks (Amendment Act) 2002 marked Kenya's first step towards the recognition of international marks. The act contained references to the Madrid Agreement and Protocol, and to the World Intellectual Property Organization (WIPO). It also defined an 'international trademark' as a mark entitled to protection in Kenya under the Madrid system. However, the act contained no substantive provisions for the recognition, processing or enforcement of the Madrid Agreement and Protocol.

The implementation of the rules was therefore keenly awaited. The rules' main features are as follows:

• The registrar must examine an application designating Kenya, and either notify WIPO that protection may not be granted or publish the application as it would for a national trademark application.
  
  
• Any person may oppose published international marks designating Kenya. The procedure is the same as that for opposition of national applications. The registrar is to notify WIPO if it refuses registration following an opposition action.
  
  
• The grounds of refusal, whether on examination by the registrar or upon opposition, are to be in accordance with the applicable text of the Madrid system.
  
  
• Protection may be refused with respect to all, or only some of the goods or services for which protection is sought.
  
  
• The registrar is to maintain a supplementary register to record international marks designating Kenya. Any party may request a search and extracts or copies, although it appears that personal searches may not be available.
  
  
• An international mark may be taken off the supplementary register on the grounds of non-use, or expunged or amended on the same grounds as apply to national registrations.
  
  
• An international mark may be transformed into a Kenyan registration if the underlying international registration is cancelled at the request of the office where the basic registration was made.
  
  
• Applications that were pending as of August 22 2003 are to be automatically entered into the supplementary register if the notice period had expired at that date. Registration is to occur without examination or publication for opposition. Where the applicable period had not expired, the registrar must examine the applications.
  
  
• International marks that are duly registered will have the same effect and enjoy the same protection as national trademark registrations in Part A of the register.

The rules also provide for owners of Kenyan national trademark registrations to apply for international registrations on the basis of their national registration.

Other African countries that signed the Madrid Agreement and Protocol have yet to enact them into national law to make them effective. This is the case of Lesotho (which joined the international system in 1999), Sierra Leone (which joined in 1997), Sudan (which joined in 1984), Swaziland (which joined in 1998) and Zambia (which joined in 2001).

Mac Spence, Spoor & Fisher, St Helier