The Trade Marks (Amendment) Act, 1994
No. 5 of 1994
Date of Assent: 28th July, 1994
Date of Commencement: by Notice
An Act of Parliament to amend the Trade Marks Act to provide for the registration of service marks and for matters connected therewith
Enacted by the Parliament of Kenya as follows:—
Short Title and Commencement
1. This Act may be cited as the Trade Marks (Amendment) Act, 1994 and shall come into operation on a date to be appointed by the Minister by notice in to Gazette. Amendment of Section 2 of Cap. 506
2. Section 2 of the Trade Marks Act, in this Act referred to as “the principal Act,” is
amended—
(a) by deleting from subsection (1) the definitions of “mark” and “trade mark” and inserting the following new definitions—
“mark” includes a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form;
“certification trade mark” means a mark registered or deemed to have been registered under section 40;
“trade mark” means (except in relation to a certification trade mark) a mark used or proposed to be used—
(a) in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person or distinguishing goods in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person;
(b) in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person or distinguishing services in relation to which the mark is used or proposed to be used from the same kind of services connected in the course of business with any other person;
(b) by inserting in subsection (1) the following new definitions in their proper alphabetical sequence—
“distinguishing guise”, in relation to goods, means the shape or configuration of containers of the goods;
“profession” means a calling or occupation, not being a trade or handicraft, carried on by an individual person being a member of a lawfully established body of persons each of whom is qualified and licensed by that body as having acquired and holding the specialized knowledge necessary to enable that person to practise in the particular department of learning or science with which such body is concerned;
“services” are services within the meaning of this Act where they are normally provided for remuneration, in so far as they are not governed by the provisions of any written law relating to freedom of movement for goods, capital and persons and in particular include activities of an industrial or commercial character or of craftsmen and of the professions;
“trade” means any type of profession or other business occupation in which a mark may be used in the manner prescribed by this Act.
(c) by deleting subsection (2) and inserting the following—
(2) Any reference in this Act to the use of a mark shall ‘be construed—
(a) as a reference to the use of a printed or other visual representation of the mark and, in the case of a distinguishing guise, to the use of such distinguishing guise;
(b) if the mark is capable of being audibly reproduced, as including a reference to the use of an audible reproduction of the mark;
(c) in relation to goods, as a reference to the use thereof upon or in physical or other relation to goods; and
(d) in relation to services, as a reference to the use thereof in relation to the performance of such service.
Amendment of Section 5 of Cap. 506
3. Section 5 of the principal Act is amended by deleting the words “goods as the goods of another person”.
Replacement of Section 6 of Cap. 506
4. Section 6 of the principal Act is deleted and replaced by the following new section—
Registration of to be in Respect of Particular Goods or Services
6. A trade mark must be registered in respect of particular goods or services and any question arising as to the class within which any goods or services fall shall be determined by the Registrar.
Amendment of Section 7 of Cap. 506
5. Section 7 of the principal Act is amended—
(a) by deleting subsection (1) and inserting the following new subsection—
(1) Subject to the provisions of this section, and of sections 10 and 11, the registration (whether before or after 1st January, 1957) of a person in Part A of the register as the proprietor of a trade mark if valid gives to that person the exclusive right to the use of the trade mark in relation to the goods or in connection with the provision of any services and without prejudice to the generality of the foregoing that right is infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which it is registered, and in such manner as to render the use of the mark likely to—
(a) be taken either as being used as a trade mark;
(b) be taken in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or goods with which such a person is connected in the course of trade;
(c) be taken in a case where the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public or any part thereof, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to services with the provision of which such a person as aforesaid is connected in the course of business;
(d) cause injury or prejudice to the proprietor or registered user of the trade mark.
(b) by inserting after the words “to any market” in subsection (2) the words “or services for use or available for acceptance in any place or country”;
(c) by adding at the end of subsection (3) the following new paragraphs—
(c) in relation to services to which the proprietor of the trade mark or a registered user conforming to the permitted use has applied the trade mark, where the purpose and effect of the use of the trade mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the trade mark; or
(d) in relation to services the provision of which is connected in the course of business with the proprietor or a registered user of the trade mark, where the proprietor or registered user has at any time expressly or impliedly consented to the use of the trade mark; or
(e) in relation to services available for use with other services in relation to which the trade mark has been used without infringement of the right given by registration or night for the time being be so used, if—
(i) the use of the trade mark is reasonably necessary in order to indicate that the services are available for such use; and
(ii) neither the purpose nor the effect of the use of the trade mark is to indicate otherwise than in accordance with the fact that there is a connection in the course of business between any person and the provision of those services.
Amendment of Section 8 of Cap. 506
6. Section 8 of the principal Act is amended—
(a) by deleting from subsection (1) all the words from “in respect of any goods” to “as if the registration had been in Part ‘A’ of the register” and substituting “if valid gives to that person the same right”;
(b) by adding at the end of subsection (2) the words “or in respect of services that a person having the right either as proprietor or as registered user to use the trade mark is connected in the course of business with the provision of the services”.
Amendment of Section 9 of Cap. 506
7. Section 9 of the principal Act is amended by deleting subsection (1) and inserting the following—
(1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods or a person performing the services, enters into an obligation to the effect that he will not do, in relation to the goods or services, an act to which this section applies, any person who, being the owner for the time being of the goods or the person performing the services and having notice of the obligation, does that act, or authorizes it to be done, in relation to the goods or services, in the course of trade, or with a view to any dealing therewith in the course of trade thereby infringes the right to the use of the trade mark given by the registration thereof, unless that person becomes the owner of the goods by purchase for money or money’s worth or performs the services in good faith before receiving notice of the obligation or by virtue of a title claimed through another person who so became the owner thereof.
Amendment of Section 12 of Cap. 506
8. Section 12 of the principal Act is amended by adding at the end of subsection (2) the words “and in relation to services means to distinguish services with the provision of which the proprietor is or may be connected in the course of business, from services the provision of which he is not so connected”.
Amendment of Section 13 of Cap. 506
9. Section 13 of the principal Act is amended by adding at the end of subsection (1) the words “and in relation to services of distinguishing services with the provisions of which the proprietor of the trade mark is or may be connected in the course of business from services with the provision of which be is not so connected”.
Amendment of Section 15 of Cap. 506
10. Section 15 of the principal Act is amended—
(a) by deleting from subsection (1) all words after “identical with” and substituting “or nearly resembles a mark belonging to a different proprietor and already on the register in respect o the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services.”
(b) by adding in subsection (3) after the words “description of goods” the words “or in respect of the same services or description of services”.
Amendment of Section 17 of Cap. 506
11. Section 17 of the principal Act is amended by adding in paragraph (b) after the words “the trade” the words “or to the provision of services of that description”.
Amendment of Section 18 of Cap. 506
12. Section 18 of the principal Act is amended—
(a) in subsection (1) by—
(i) adding after the words “article or substance” at the end of the first paragraph the words “or of some activity”;
(ii) adding the following further proviso—
(iii) that there is a well-known and established use of the word or words as the name or description of some activity by a person providing services which include that activity, not being use in relation to services with the provision of which the proprietor or a registered user of the trade mark is connected in the course of business;
(b) in subsection (2) by deleting the words “paragraph (i) or paragraph (ii) of:” and adding in paragraphs (a), (b) and (c) (i) after the words “of the same description” the words “or of the activity in question”.
Amendment of Section 23 of Cap. 506
13. Section 23 of the principal Act is amended by adding in proviso (i) of subsection (4) after the words “trade use” the words “or business use”.
Amendment of Section 25 of Cap. 506
14. Section 25 of the principal Act is amended—
(a) by deleting subsections (1), (2) and (3) and substituting the following new subsections—