IP Case Law library

Facts

The applicant sought the removal of Trademark Application No. 63532 from the Kenya Industrial Property Institute (KIPI) register, alleging prolonged non-use of the mark. The trademark, which had been registered for several years in respect of specific goods, faced unchallenged evidence of inactivity. The applicant submitted sworn affidavits, sales data, and marketing records demonstrating that the mark had not been used in commerce for over five years. The registered proprietor failed to file a counter-statement or appear before the Registrar to defend the registration, leaving the claims of non-use unrefuted.

Issue

The central issue was whether Trademark No. 63532 should be expunged from the register on grounds of non-use, as provided under Kenyan trademark law. This required determining whether the mark had been genuinely unused for a continuous period of five years, thereby losing its distinctiveness and justifying its removal to prevent cluttering the register and prejudicing other traders.

Rule

Under Section 29 of the Trade Marks Act (Cap 506) of Kenya, any person may apply to the Registrar for the removal of a trademark from the register if it has not been used in good faith for a continuous period of five years preceding the application. The rule mandates that a trademark must serve its essential function of distinguishing the goods or services of its proprietor in the course of trade. Non-use renders the mark vulnerable to expungement, aligning with the public interest in maintaining a functional and accurate trademark register.

Analysis

The Registrar examined the evidence of non-use, which included detailed affidavits and the absence of commercial activity, and found it compelling and uncontradicted. The lack of response from the proprietor reinforced the conclusion that the mark had ceased to function as a badge of origin. The analysis highlighted critical intellectual property concerns: retaining unused marks could block legitimate new applications and distort competition. The five-year threshold of non-use was clearly met, and the mark’s dormancy undermined its legal and economic justification for continued registration.

Conclusion

The Registrar ordered the expungement of Trademark No. 63532 from the KIPI register, ruling that the evidence conclusively proved non-use over the statutory period. This decision upheld the integrity of Kenya’s trademark system by removing a defunct entry, ensuring that only actively used marks retain protection. The ruling reinforced the principle that trademark rights depend on genuine commercial use and served as a precedent for maintaining a clean and effective register.

Ruling available here.