3 SPOT COLOURS

BLACK

RED

BROWN PANTONE 160

TRADE MARKS An introduction to Trade marks for Small and Medium -size enterprises

3 S POT COLOURS

B LAC K

R ED

BROWN PANTONE 160

KENYA INDUSTRIAL PROPERTY INSTITUTE

For more SMEs information contactWIPO’s SMEs Division at:Address:34,Chemin des ColombettesP.O Box 18CH-1211 Geneva 20Switzerland.Fax:+41 22 338 87 60Email:Sme@wipo.intWeb page:Http://WWW.WIPO.int/sme

For more information contact the:Kenya industrial Property instituteP.O. Box 51648-002Nairobi KenyaTelephone:254-2-606010/1Fax::254-2-606312E-Mail:kipi@swiftkenya.comWeb site:Http://www.kipo.ke.wipo.net

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PREFACE

The Kenya Industrial Property Institute (KIPI) is a corporate body established underthe Industrial Property Act, 2001. The Institute is under the Ministry of Trade andIndustry. The Act provides for establishment of a Board of Directors, which overseesthe general management of the Institute. The Institute is headed by a ManagingDirector who implements two Acts of Parliament namely, the Industrial PropertyAct, 2001 and the Trade Marks Act, Cap 506. The main functions of the Instituteare to grant and register industrial property rights which include patents, industrialdesigns, utility models and trade and service marks; screen technology transferagreements and licences; provide to the public industrial property information andpromote use of industrial property (IP) in Kenya. The Industrial Property Act, 2001also provides for the establishment of the Industrial Property Tribunal whose mainfunction is to hear and determine appeals from the decisions of the ManagingDirector.

The World Intellectual Property Organization (WIPO) is one of the 16 specializedagencies of the United Nations system of organization, with its headquarters inGeneva, Switzerland. WIPO administers 23 international treaties dealing withdifferent aspects of intellectual property protection. Intellectual property includestrade/service marks, geographical indications, patents, utility models, industrialdesigns, integrated circuits, copyright and related rights, and plant breeders’ rights.The treaties administered by WIPO in relation to trade/service marks are the ParisConvention, Madrid Protocol and Agreement, the Trademark Law Treaty, the NiceAgreement concerning the International Classification of Goods and Services andthe Vienna Agreement establishing the International Classification of the FigurativeElements of Marks.

The World Trade Organization (WTO) is an intergovernmental organizationestablished by the Marrakesh Agreement concluded on 15th April 1994 and enteredinto force on 1st January 1995. WTO administers the Agreement on Trade RelatedAspects of Intellectual Property (TRIPS Agreement). The TRIPS Agreement is amultilateral trade agreement that binds all members of WTO to provide protectionto all categories of intellectual property.

Protection of marks is very important to the business community. Like our ownunique fingerprints that identify who we are, a company’s trade marks identify itsproducts or services in the market place. Consumers make choices based on quality,reliability and value expected from particular products or services. Consumers knowwhat products to reach for on the shelf or pass over the ones that do not meet their

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needs or expectation because they recognize their marks. With so many similarproducts and services available world wide, companies depend on trademarks tobuild consumer confidence. In the recent past there has been a public outcry fromproprietors of marks and consumers over counterfeit products. Available statisticsindicate that trade in counterfeit products cost the Kenyan Government losses ofup to Kenya shillings ten billion annually in tax revenue. In addition the illegitimatetrade has led to collapse of some of the major industries. The government,manufacturers and consumers alike have felt the devastating effects of counterfeitproducts which include erosion of brand equity and trademark reputation, loss ofmarket segments to unscrupulous traders, closure of factories, lay offs andretrenchment, loss of sales revenue, increased consumer complaints when goodsare substandard, product failure while some pose health problems to consumers.

This guide explores and provides, from a business perspective, practical and user-friendly information on trademarks to users and potential users such asentrepreneurs, Small and Medium Size Enterprises (SMEs) and other stakeholders.The guide is designed to be an introduction to trade and service marks registrationprocedures and to outline how one can use the resources of the Institute to protecttheir marks. It is not, however, a comprehensive text on trademark laws.

For more detailed information on how to register your trademark, you may visitthe Institute or consult the Trademarks Act, Cap 506 of the Laws of Kenya,available from the Government Printer.

Managing Director

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TABLE OF CONTENTS

1. Trade Marks ....................................................................... 1

2. Protecting your Trade marks ............................................. 4

3. Types of Trade marks ...................................................... 11

4. Using your Trade mark .................................................... 12

5. Enforcing your Trade mark .............................................. 16

6. Annexes ........................................................................... 23

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1. Trademarks

In Kenya, registration of marks isgoverned by the Trademarks Act, Cap 506of the Laws of Kenya.

What is a Trademark1?A trademark is a distinctive sign, whichdistinguishes the goods or servicesproduced or provided by one enterprisefrom those of another.

A mark includes any distinctive word,letter, slogan, device, brand-name,heading, label, ticket, name, signature or

numeral or any combination whether intwo dimensional or three-dimensionalform.

A number of countries also allow theregistration of less traditional forms oftrademarks such as single colours, audiblesigns (sounds) or olfactory signs (smells).Other countries have set limits to what canbe registered as a trademark, generallyallowing signs that are visually perceptibleor can be represented graphically.

Examples of Trademarks

1 This guide applies equally for trade marks (used for goods) and service marks (used for services).

504"504" is a mark of AutomobilesPeugeot of France

“Yes” is aregistered markof KencellCommunicationsLimited.

“JOGOO” is aregistered mark ofUnga Limited

Words:

Device

Combinations ofletters with devices

Three-dimensionalmarks:

Slogan

Numerals

The device is a registeredmark of Nation MediaGroup.

The wind milldevice is aregistered markof Unga Limited

“KTN” is a registered mark of theStandard Group“KTN” is a registeredmark of the Standard Group

“KCB” is aregisteredmark of KenyaCommercialBank

Coca-Cola bottleThe contour device of abottle is a registered mark of Coca ColaCompany

“the pride of Africa” is a mark of KenyaAirways.

“0722” is a registeredmark of Safaricomlimited

COUNTRY MY BEER“MY COUNTRY MY BEER” is amark of East Africa BreweriesLimited.

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What are trademarks for?

The main function of a trademark is toenable consumers to identify a product(whether a good or a service) of aparticular company so as to distinguish itfrom other identical or similar productsprovided by competitors. Consumers whoare satisfied with a given product are likelyto buy or use the product again in thefuture. For this, they need to be able todistinguish easily between identical orsimilar products.

By enabling companies to differentiatethemselves and their products from thoseof the competitors, trademarks play apivotal role in the advertising andmarketing strategies of companiescontributing to define the image, goodwilland reputation of the company’s productsin the eyes of consumers. The image andreputation of a company, built on the basisof the performance of its products in termsof meeting the needs of the consumers,creates trust. Such trust is the basis forestablishing a loyal clientele. Consumersoften have an emotional attachment tocertain trademarks, as they are associatedwith a set of desired qualities or featuresembodied in the products bearing suchtrademarks.

Trade marks also provide an incentive tocompanies to invest in maintaining orimproving the quality of their products inorder not to deceive customers andensure that products bearing the trademark have a positive reputation.

The Value of Trade marks

A carefully selected and nurturedtrademark is a valuable business asset

for a company. For some, it may be themost valuable asset they own. Estimatesof the value of some of the world’s mostfamous trademarks such as Coca-Cola orIBM, exceed 50 billion dollars each. This isbecause consumers value trademarks,their reputation, their image and a set ofdesired qualities they associate with themark and are willing to pay more for aproduct bearing a trademark that theyrecognize and meets their expectations.Therefore, the very ownership of atrademark with a good image andreputation provides a company with acompetitive edge over its competitors.

Examples of valuable marks in the Kenyanmarket.

“Kasuku” is a registered mark of KapaOil Refineries Limited

“Tusker” is a registered mark of EastAfrican Breweries Limited.

“OMO” is a registered mark of UnileverLimited

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Why should your companyprotect its trademark(s)?

While most businesses realize theimportance of using trademarks todifferentiate their products from those oftheir competitors, not all realize theimportance of protecting them throughregistration.

Registration gives your company theexclusive right to prevent others frommarketing identical or similar productsunder the same or a confusingly similarmark.

Without protection, your investments inmarketing a product may becomewasteful, as rival companies are able touse the same or confusingly similartrademark for identical or similar products.Imagine what would happen if acompetitor adopts a similar or identicaltrade mark. Customers would be misledinto buying the competitor’s productthinking it is your company’s product. Thiswould not only decrease your company’sprofits and confuse your customers, butmay also damage the reputation andimage of your company, particularly if therival product is of inferior quality.

Given the potential value of trademarksand the importance that a trademark mayhave in determining the success of aproduct in the marketplace it is critical tomake sure that it is adequately protected.

In addition, a registered trademark maybe licensed to other companies, thus

providing an additional source of revenuefor your company, or may be the basis fora franchise agreement.On occasions, a registered trademark witha given reputation among consumers mayalso be used to obtain funding ascollateral from financial institutions that areincreasingly aware of the importance ofbrands for business success.

A trademark:

� Ensures that consumers candistinguish between products

� Enables companies to differentiate theirproducts

� Is a marketing tool and the basis forbuilding a brand image and reputation

� May be licensed and provide a directsource of revenue through royalties

� May be a crucial component offranchising agreements

� May be a valuable business asset

� Encourages companies to invest inmaintaining product quality

� May be useful for obtaining financing

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2. Protecting your Trademarks

How can your company protectits trademark(s)?

In Kenya trademark protection may beobtained through registration or use.Even though trademarks may be protectedthrough use, you are well advised toregister the trademark by filing theappropriate application form with theInstitute, as registration will providestronger protection, particularly in the caseof conflict with an identical or confusinglysimilar trademark. Under the Act noperson is entitled to institute anyproceeding to prevent, or to recoverdamages for the infringement of anunregistered trademark. Kenyan Citizensmay or may not use the services of atrademark agent to register a mark.However, foreigners MUST use theservices of a local agent.

Is the registration of the tradename of your company suffi-cient?

Many people believe that by registeringtheir business and its trade name underthe Registration of Business Names Act,Cap 499 of the Laws of Kenya and TheCompanies Act, Cap 486 of the Laws ofKenya, this name would also beautomatically protected as a trademark.This is a rather common misconception. Itis important to understand the differencebetween trade names and trademarks.

A trade name is the full name of yourbusiness, such as: “BIDCO OILREFINERIES LIMITED” and it identifies

your company. It means the name orstyle under which any business is carriedon whether in partnership or otherwise oras a limited company. It often ends withLimited, enterprises or other similar titlesthat denote the legal character of thecompany.

A trademark, however, is whatdistinguishes the product(s) of yourcompany from those of othercompanies. A company may have varioustrademarks. For instance, BIDCO OILREFINERIES LIMITED sells one of itsproducts as “CHIPSY” and another as“GOLDEN FRY”.

Companies may use aspecific trademark toidentify all theirproducts, a particularrange of products orone specific type ofproduct produced by thecompany. For exampleUNGA LIMITED uses the device of aWIND MILL on all their products.

Some companies may also use their tradename or part of it as a trademark. Forexample, Kenya Tea Packers limited usesKETEPA as a trademark.

So, registering your business and its namewith the Companies Registry does notoffer trademark protection, even if thelatter is identical to the trade name. Youshould make sure you register yourtrademark at the Institute irrespective ofwhether you have registered the businessname or not.

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Who is authorized to apply fortrademark registration?

Any person who intends to use atrademark or to have it used by thirdparties can apply for registration. Thatperson can be either a natural person or alegal entity. A legal entity is a businessname or a company registered as outlinedabove.

Is it compulsory to register atrademark?

While it is not compulsory, it is highlyadvisable, since registration providesexclusive rights to prevent unauthorizeduse of the trademark. In addition, having aregistered trademark may prove useful inthe event of infringement proceedings incourt; the owner of a registered trademarkmay also claim damages.

What is registrable as a trade-mark?

In order for a trademark to be registrable,it must contain or consist of at least one ofthe following essential particulars asstipulated in the Section 12 of the Act.These are;

• the name of a company,individual or firm, represented ina special or particular manner;

• the signature of the applicant forregistration or some predecessorin his business;

• an invented word or inventedwords;

• a word or words having no directreference to the character orquality of the goods, and not

being according to its ordinarysignification a geographical nameor a surname;

• any other distinctive mark.

The key requirement is thereforeDISTINCTIVENESS.

What are the main reasons forrejecting an application?

The Registrar will reject an application fora mark that is identical or which resemblesa mark belonging to another proprietorand is already registered or pendingregistration, or if it so nearly resemblessuch other mark as to be likely to deceiveor cause confusion.

When choosing a trademark for yourbusiness, it may also be helpful to knowwhich categories of signs are usually notaccepted for registration. Applications fortrademark registration are usually rejectedon what are commonly referred to as“absolute grounds” in the following cases:

Absolute grounds

1. Generic terms. These are the actualnames of the products in question.For example, if your company intendsto register the trademark CHAIR tosell chairs, the mark would berejected since “chair” is the genericterm for the product.

2. Descriptive terms. These are wordsthat are usually used in trade todescribe the product in question. Forexample, the mark SWEET is likely tobe rejected for marketing juice asbeing descriptive. In fact, it would beconsidered unfair to give any single

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juice manufacturer exclusivity over theword “sweet” for marketing itsproducts. Similarly, qualitative orlaudatory terms such as “RAPID”,“BEST”, “CLASSIC”, “SUPER”“BEAUTIFUL” or “INNOVATIVE” arelikely to give rise to similar objectionsunless they are part of an otherwisedistinctive mark. In such cases, it maybe necessary to include a disclaimerclarifying that no exclusivity is soughtfor that particular part of the mark. Forexample if Sony Sugar CompanyLimited applied for registration of themark “SONY SUGAR” for sugar, theywould be required to disclaim the rightto the exclusive use of the word“SUGAR” separately and apart fromthe mark as a whole.

3. Deceptive trademarks. These aretrademarks that are likely to deceiveor mislead consumers as to thenature, quality or geographical originof the product. For example,marketing pork products such asbacon under a trademark featuring aCOW would be rejected, as it wouldbe considered misleading forconsumers, who are likely toassociate the mark with beefproducts.

4. Marks considered to be contrary topublic order or morality. Words andillustrations that are considered toviolate commonly accepted norms oflaw, morality or any scandalousdesign in Kenya are not allowed to beregistered as trademarks.

5. Flags, armorial bearings, officialhallmarks and emblems of statesand international organizationswhich have been communicated to

the International Bureau of WIPO areusually excluded from registration. Forexample, the Kenyan flag may not beregistered for marketing Kenyan teawithout authorization from thegovernment.

Relative grounds

Applications are rejected on “relativegrounds” when:

1. The trademark is in conflict withprior trademark rights. Having twoidentical (or very similar) trademarksfor the same type of products couldcause confusion among consumers.For example JETEPA would not beaccepted for registration as a mark fortea due to existence of the markKETEPA for the same products. Theregistry checks for conflict withexisting marks, including unregisteredwell-known marks as a regular part ofthe registration process. If the registryconsiders your trademark to beidentical or confusingly similar to anexisting one for identical or similarproducts, it will be rejected. It wouldtherefore be advisable to avoid usingtrademarks that risk being consideredconfusingly similar to existing marks.

2. The mark is, in its ordinarysignification, a geographical nameor a surname. In such cases proof ofsecondary meaning may be requiredbefore registration.

What should be kept in mindwhen selecting or creating yourtrademark?

Selecting or creating an appropriate

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trademark is a critical step, as it is animportant element of the marketingstrategy of your business. So what is anappropriate trademark for your product(s)or services? Evidently, there are no hardand fast rules. Nevertheless,recommendations such as the followingshould always be kept in mind.

Five point checklist for selectingyour trademark� Check that your trademark of choice

meets all the legal requirements forregistration (see what is registrableas a trademark above)

� Do a trademark search to makesure that it is not identical orconfusingly similar to existingtrademarks (see below)

� It is advisable that the trademark iseasy to see, read, write, spell andremember and is suitable to alltypes of advertising media

� Make sure the mark does not haveany undesired connotations in yourown language or in any of thelanguages of potential exportmarkets.

� It is convenient that thecorresponding domain name (i.e.Internet address) is available forregistration (more on the relationshipbetween trademarks and domainnames on page 13).

While selecting one or more words as yourtrade mark you should also take intoconsideration the implications of selectingthe following types of words:

a) Coined or “fanciful” words. Theseare invented words without anyintrinsic or real meaning. Coined

words have the advantage of beingeasy to protect, as they are morelikely to be considered distinctive. Onthe negative side, however, they maybe more difficult to remember forconsumers requiring greater efforts inadvertising the products.

Example:

“Royko” is a registered trade mark of Unilever Limited

b) Arbitrary marks: These are wordsthat have a meaning that is notrelated to the product they advertise.While these types of marks will alsobe easy to protect, they may alsorequire heavy advertising to createthe association between the mark andthe product in the minds ofconsumers.

Example:

KASUKU” is a registered trade mark of Twiga

Stationeries & Printers Limited

c) Suggestive marks. These are marksthat hint at one or some of theattributes of the product. The appealof suggestive marks is that they act asa form of advertising. A slight risk,however, is that the Registrar mayconsider a suggestive mark to be toodescriptive of the product and reject

1 Please see annex for relevant forms

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or identical mark.You then send or hand in a duly completedtrademark application form(TM 2), whichshall include your contact details,illustration of the mark, description of thegoods and or services and class (es) forwhich you wish to obtain trademarkprotection, and pay the required fees. InKenya, an international classification ofgoods and services known as the NiceClassification (see annex II) is appliedfrom which you will choose those whichcorrespond with the use of yourtrademark.

The steps taken by the Institute are asfollows:

1. Formality Examination.The application is examined to make surethat it complies with formality requirementsi.e., whether the application fee has beenpaid, the application form is properly filledin and contains all the necessaryinformation.

2. Substantive ExaminationThe application is then examined to verifywhether it complies with all substantiverequirements i.e., whether it belongs to acategory, which is excluded fromregistration by the Act and whether thetrademark is in conflict with any existingmark on the register.

3. PublicationOnce it has been decidedthat there are no grounds for refusal, thetrademark is published in the IndustrialProperty Journal or in the Kenya Gazetteallowing a period of 60 days for anyperson to give notice of opposition.

4. Registration When an application forregistration of a trademark has been

its registration.

Example: The trademark CHIPSY formarketing cooking fat would hint atthe fact that the product is meant forfrying chips. However, one needs tobe cautious since some trade markregistries could possibly find the markto be too descriptive and be reluctantto register it.

“CHIPSY” is a registered trademark of BIDOC Oil

Refineries Limited

Note:Irrespective of the type of mark youchoose, it is important to avoid imitatingexisting trademarks. A slightly alteredcompetitor’s trademark or a mis-spelt well-known or famous mark is unlikely to beregistered.

Example: PEPTANG is a knowntrademark for tomato sauce owned byPremier Foods Industries Limited. It wouldbe unwise to try to sell the same or similarproducts using the trademark BEBTANGas it will probably be considered to beconfusingly similar to the existing markand is unlikely to be registered.

Registering a TrademarkThough not mandatory, you may requestthe Registrar to carry out a search andgive preliminary advice (By filingtrademark form TM 27)1 as to registrabilityof your mark. Alternatively, you may carryout your own search referred to as thepersonal search. It is advisable to carryout a search before you apply forregistration to avoid conflict with a similar

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accepted and either (a) the application hasnot been opposed and the time for noticeof opposition has expired; or (b) theapplication has been opposed and theopposition has been decided in favour ofthe applicant and unless the applicationhas been accepted in error the trademarkis registered. The initial registration is validfor 10 years.

5. RenewalThe mark may be renewed indefinitely bypaying the required renewal fees afterevery 10 years. However the mark may beremoved from the register by the Registrarfor non-payment of renewal fee.

6. Non use of the markUnder the Act, there is no requirement ofproof of use or a declaration of intent touse the mark for purposes of application.However, once the mark is registered, anyperson may apply for its removal from theregister if the mark has not been in use fora continuous period of 5 years.The Institute will give you more preciseinformation concerning the applicationprocess.

How long does it take to registera trademark?

The time required for the registration ofyour trademark will vary, generally rangingfrom 6 months to 2 years, depending,among other things, on how long theapplicant takes to comply with registrationrequirements.

What are the costs associatedwith trademark creation,protection and use?

It is important to keep in mind and properlybudget the costs related to the trademarkregistration process and its subsequentuse. These include:

1. Costs associated to the creation ofthe device or word to be used as atrademark as many companiessubcontract its creation to consultants

2. Costs for conducting a trademarksearch.

3. Costs associated with the registrationprocess, which will vary depending oncoverage (number of countries thatthe trademark will be protected), andthe categories of products ortrademark classes for whichprotection is sought.

4. Applicants who use trademark agentsto assist in the registration processwould face additional costs but wouldprobably save significant time andenergy in following the registrationprocess.

5. Costs associated to the use of the

Application Process

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trademark e.g. by including it in allenvelopes, letterheads, labels,packaging, advertising etc.

What is a Trademark search?

Before submitting an application forregistering your trademark, it is advisablethat a proper trademark search becarried out. This is done to make surethat the trademark you intend to use, or asimilar one, is not already registered byanother company for identical or similarproducts or services.

There are two types of searches namely(a) official search where the institute

carries out the search uponrequest by the applicant or hisagent or

(b) personal search in which thesearch may be conducted directlyby the applicant or an agent,upon payment of prescribedfees.

In whatever manner it is done; bear inmind that any such trademark search isonly preliminary. It may be difficult tomake sure that your trademark of choice isnot “confusingly similar” to existing validlyregistered trademarks or pendingapplications. Guidance of an experiencedtrademark agent, who is familiar with thepractice of the Institute and courtdecisions, may be very helpful.

A Well-classified System

While filling in your trademark applicationform you are required to indicate thegoods and/or services for which you wish

to register your trademark and to groupthem according to “classes”. The classesrefer to the classes in the trademarkclassification system. The trademarkclassification system allows storage ofdata on registered trademarks in anorderly manner in relation to the types ofgoods or services. This makes it easier toretrieve information from trademarkdatabases. It is critical to register yourtrademark in all classes in which youintend to use your trademark.

The Institute uses the InternationalTrademark Classification system referredto as the Nice System for classification ofword marks, which has 34 classes forgoods and a further 11 for services (formore information on Nice Classificationsystem please visit http://www.int/classifications/en/nice/about)

How are products classified?Let us takean example. If your company is producingknives and forks, then your trademarkapplication should be made for thecorresponding goods in class 8. If,however, you wish to market other kitchenutensils (such as containers, pans or pots)using the same trademark you will alsohave to register the mark for thecorresponding goods in class 21. Youmay cover a number of classes with asingle application, the system referred toas the multiple class filing.

Do you need a trademark agentto file a trademark application?

If you reside in Kenya or have a principalplace of business in Kenya, you do notrequire a trademark agent to file anapplication: you may file the application

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yourself. But the services of a trademarkagent skilled in conducting trademarksearches and familiar with the detailedprocedure for trademark registration maybe conveniently used to save significanttime and energy and to avoid refusal onabsolute grounds. An applicant isrequired to use a local trademark agent ifhe is non-resident or if his principal placeof business is outside Kenya. Like wise ifyou apply for trademark registrationabroad you may be required to have atrademark agent who is resident in thatcountry.

For how long is your registeredtrademark protected?

Registered trademarks are protected forinitial 10 years but the registration may berenewed indefinitely for consecutiveperiods of 10 years, provided renewal feesare paid in time.

Is trademark registration inKenya valid internationally?

The legal rights arising out of a trademarkregistration are normally limited to theterritory within which it is registered; so,ordinarily, valid registration of a trademarkin Kenya gives you rights only in Kenyaunless your mark is considered to be a“well-known mark.” (For information onwell known marks see page 12).

If your trademark is developedby another company, who ownsthe trademark?

When the creation of a trademark issubcontracted, it is usually best to clarify

issues of ownership in the originalagreement with the other company orconsultant in order to avoid potentialdisputes concerning ownership.

Should you consider protectingyour trademark abroad?

All the main reasons for registering yourtrademark in Kenya also apply to thecommercialisation of your products inforeign markets. It is therefore highlyadvisable to register your trademarkabroad if you are currently engaged inexport operations or intend to do so in thenear future. Exporting goods bearing adistinctive trademark will enable yourexport products to be recognized inforeign markets allowing your company tobuild a reputation and image amongforeign consumers that may result inhigher profits for your company.

How can you register the trade-mark of your company abroad?

If you have registered the trademark ofyour business in Kenya but now wish toexport or grant a license to anothercompany to use the trademark in othercountries, then it is advisable to registerthe trademark abroad. There are twomain ways to do so:

1. The National Route: your businessmay apply to the trademark office ofeach country in which it is seekingprotection by filing the correspondingapplication and paying the requiredfees. As indicated earlier, a countrymay require you to use the services ofa locally based trademark agent forthis purpose.

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2. The International Route: Kenya is amember of the Madrid System and ifyour trademark has been registeredor applied for in Kenya, you may usethe Madrid System administered byWIPO to register your trademark inthe up to 70 countries that are party tothe System. A list of current membercountries of the Madrid System isavailable in Annex II.

Advantages of using the Madrid System

The principal advantages of using theMadrid System are that the trademarkowner can protect his trademark in all thecountries party to the System by filing:- a single international application- in one language- subject to one set of fees and

deadlines,Thereafter, the international registrationcan be maintained and renewed through asingle procedure.

You may find more information oninternational registration of marks either atthe Institute or on the WIPO web site:www.wipo.int/madrid/.

3. Types of Trademarks

Trade marks: Marks used to identifycertain goods as those produced by aspecific enterprise.

Service marks: Marks used to identifycertain services as those provided by aspecific enterprise.

Collective marks: Marks used to identifygoods or services produced orprovided by members of anassociation.

Certification marks: Marks used toidentify products that comply with a setof standards and have been certifiedby a certifying authority.

Well-known marks: Marks that areconsidered to be well known in themarket and as a result benefit fromstronger protection.

What is a Service Mark?

A service mark is very similar in nature toa trademark. Both are distinctive signs;trademarks distinguish the goods of oneenterprise from those of others, whileservice marks fulfil the same function inrelation to services. Services may be ofany kind, such as financial, banking,travel, advertising or catering, to name afew. Service marks can be registered,renewed, cancelled, assigned andlicensed under the same conditions astrademarks.

Example

Uchumi is a registered Service mark of Uchumi

supermarkets ltd

What are collective marks?

A collective mark is owned by anassociation or a cooperative whosemembers may use the collective mark tomarket their products. The associationgenerally establishes a set of criteria forusing the collective mark e.g., qualitystandards and provides individualcompanies the choice to use the mark ifthey comply with such standards.

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Collective marks may be an effective wayof jointly marketing the products of a groupof enterprises, which may individually findit more difficult to make their individualmarks recognized by consumers and/or tobe accepted for distribution by the maindistributors. Applicants are generallyrequired to submit the regulationsgoverning the use of the collective marktogether with the application.For Example if the handicraft dealers wereto have a single trademark to be used byany group to market their products whichare of the same quality, standard orspecification etc that mark would beconsidered a collective mark.

What are certification marks?

Certification marks are given forcompliance with defined standards, butare not confined to any membership.They may be used by anyone who cancertify that the products involved meetcertain established standards. The maindifference between collective marks andcertification marks is that the former mayonly be used by a specific group ofenterprises, e.g., members of anassociation, while certification marks maybe used by anybody who complies withthe standards defined by the owner of thecertification mark.

An important requirement for certificationmarks is that the entity which applies forregistration is considered “competent tocertify” the products concerned.

Example: The Kenya Bureau of Standardmay apply for registration of their“diamond symbol of quality” as acertification mark. The “diamond symbol”is a quality assurance symbol denotingthat the products on which it is applied

comply with strict performancespecifications set down by Kenya Bureauof Standards.

“KBS” and device is a registered mark of Kenya Bureau of

Standards

What are well-known marks?

Being a member of the World TradeOrganization, Kenya was required toprovide legal protection for well-knownmarks. In August 2002 the TrademarksAct was amended to provide for well-known marks. “Well-known marks” aremarks that are considered to be well-known by the competent authority of thecountry where protection for the mark issought. Well-known marks generallybenefit from stronger protection. Forexample, well-known marks will beprotected even if they are not registered(or have not even been used) in a giventerritory. In addition, while marks aregenerally protected against confusinglysimilar marks only if used for identical orsimilar products, well-known marks areoften protected against confusingly similarmarks for even unrelated products, ifcertain conditions are met. The mainpurpose of this stronger protection is toprevent companies from free riding on thereputation of a well-known mark and/orcausing damage to its reputation andgoodwill.

Example: Let us assume thatWONDERCOLA is the famous trademarkof a soft drink. Wondercola Limited wouldthen benefit from automatic protection in

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those countries where well-known marksenjoy a stronger protection and where themark is well known for soft drinks. Theprotection would also be available forunrelated goods and services, if certainconditions are met. That is to say, that ifanother company decides to market otherproducts, ranging from T-shirts tosunglasses, using the WONDERCOLAmark, it will have to seek the authorizationof Wondercola Limited or risk being suedfor infringement.

4. Using your Trademark

Can you register a trademarkwithout having used it?

In Kenya, it is not a requirement to use amark before application for registration.The prescribed application Form TM2provides for a mark that is being used orfor application of a mark where theproprietor is proposing to use the mark.You may therefore safely apply forregistration of a mark before you use it.However, under the Act, a trademark thathas not been used for up to the date onemonth before the date of the applicationfor a continuous period of five (5) yearsmay be taken off the register. This usuallyhappens in cases where a person appliesto register a certain mark but the Registrarobjects to the registration citing aregistered mark. The applicant then bringsexpungement proceedings before theRegistrar requesting the latter to removethe registered mark from the register citingnon-use for a continuous period of five (5)years since registration. After hearing bothparties, the Registrar then makes hisruling accordingly, which is subject to

appeal in the high court and the court ofappeal.

TM or ®?

The use of ®, TM, SM or equivalentsymbols next to your trademark is not arequirement and generally provides nofurther legal protection. Nevertheless, itmay be a convenient way of informingothers that a given sign is a trade mark,thus warning possible infringers andcounterfeiters. The ® symbol is usedonce the trade mark has been registered,whereas TM denotes that a given sign is atrademark; SM is sometimes used forservice marks. Under the Act, if you filedan application bearing the ® symbol, TMor SM, the Registrar would object to theregistration of the mark. The applicationshould also not contain words like “patent”or “patented”.

How should you use your trademark in advertising?

If your mark is registered as a device witha specific design or font, make sure that,as far as possible, you use the mark as itis registered. Note that even a slightmisrepresentation of a trademark inadvertising may prove disastrous to thevalue of trademark in the longrun. Monitorits use closely as it is crucial for the imageof your company’s products. It is alsoimportant to avoid using the trademark asa verb or noun so that it does not come tobe perceived by consumers as a genericterm. Some marks in the Kenyan marketare becoming generic. This is the casemostly with consumers who are not wellinformed. For example, when one wants tobuy a detergent, he/she asks for OMO but

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ends up buying any other brand ofdetergent. Similarly, a shopper who wantsto buy cooking fat, asks for KIMBO butends up buying the brand of cooking fatthat the shopkeeper chooses. The samecase applies to JOGOO for maize mealand ROYKO for food additives.

Can your company use the sametrademark for different prod-ucts?

Different trademarks may be used fordifferent lines of products of a company.Depending on its branding strategy, eachcompany will decide whether to use thesame trademark for its products,extending the brand every time a newproduct is released, or to use a differentmark for each line of products.

Extending an existing brand to newproducts enables the new product tobenefit from the existing image andreputation of the mark. However, the useof a new mark, more specific and relevantto the new product, may also proveadvantageous and enable the company totarget the new product to a specificcustomer group (e.g. children, teenagers,etc) or to create a specific image for thenew product line. Many companies alsochoose to use a new brand in conjunctionwith an existing brand. For example,Unilever Plc in Kenya has always usedSUNLIGHT for laundry soap.

Recently, Unilever Plc launched a newdetergent into the Kenyan market alsocalled SUNLIGHT.

Different companies adopt differentstrategies. Whatever your choice, youshould make sure that your trademark isregistered for all categories of goods and/or services for which it is, or will be, used.

What should you keep in mindwhen using your trademark onthe Internet?

The use of trademarks on the Internet hasraised a number of controversial legalproblems with no easy or uniform solution.One major problem stems from the factthat trademark rights are territorial (that is,they are only protected in the country orregion where the mark has beenregistered or used), whereas the reach ofthe Internet is global. This createsproblems when it comes to settlingdisputes between persons or companieslegitimately owning identical or confusinglysimilar trademarks for identical or similargoods or services in different countries.Legislation in this area is still largelydeveloping and different countries maytreat the issue differently.

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What is a domain name and howdoes it relate to trademarks?

A second important problem concerns theconflict between trademarks and domainnames. Domain names are Internetaddresses, and are commonly used to findweb sites. For example, the domain name‘kipo.ke.wipo.net’ is used to locate theKIPI web site at http://www.kipo.ke.wipo.net. Over time, domainnames have come to constitute businessidentifiers thus coming to conflict withtrademarks.

Therefore, it is important that you pick adomain name, which is not the trademarkof another company, particularly a well-known trademark. This is because manynational laws or courts treat registration ofthe trademark of another company orperson as a domain name as trademarkinfringement, popularly known as “cybersquatting”. If this happens, then, yourbusiness may not only have to transfer orcancel the domain name, but may alsohave to pay damages or a heavy fine.

In order to find out whether a particulartrademark is already protected, you candirectly contact the trademarks Registry.Many other national or regional trademarkoffices operate Internet-searchabletrademark databases. A list of suchdatabases is available on WIPO’s websites at http://arbiter.wipo.int/trademark/output.html.

On the other hand, if your trademark isbeing used or “cyber squatted” by anotherindividual or company then you may take

action to stop such misuse/infringement ofyour rights. In such case, one optionwould be to use WIPO’s very popular on-line administrative procedure for domainname dispute resolution at: http://arbiter.wipo.int/domains/. This WIPO website includes a model complaint as well asa legal index to the thousands of WIPOdomain name cases that have alreadybeen decided.

Can you license your trademarkto other companies?

Trademarks can be licensed to othercompanies. Under the Act, the Registrar ismandated to register licence agreements,which are referred to as “Registered userAgreements”. However, there is a proposalto amend The Act to replace the term“Registered user Agreements” with licenceAgreements to conform to the trend allover the world. In such cases, thetrademark owner retains ownership andmerely agrees on the use of the trademarkby one or more other companies. This isusually done on the basis of the paymentof royalties and involves the consent of thetrademark owner, which is usuallyspecified in a formal licensing agreement3.Depending on the nature of theagreement, the licensor often retainssome degree of control over the licenseeto guarantee that a certain quality ismaintained.

In practice, trademark licenses arefrequently granted within broader licensingagreements, e.g., franchising agreementsor agreements including the licensing of3 A license agreement is a legal binding contract establishing partnership betweenan intellectual property rights owner (licensor) and another who is authorized to usesuch rights (licensee) in exchange for an agreed payment (fee or royalty).

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other intellectual property rights such aspatents, know-how and some degree oftechnical assistance for the production ofa given product.

What does a franchisingagreement have to do withtrademarks?

Licensing of a trademark is usually a maincondition of the franchising agreement. Infranchising agreements the degree ofcontrol of the trademark owner over thefranchisee is generally greater than is thecase for standard trademark licensingagreements. In the case of franchising,the franchisor allows another person (thefranchisee) to use his way of doingbusiness (including trademarks, know-how, customer service, software, shopdecoration, etc) in accordance with a setof prescriptions and in exchange forcompensation or royalty.

Example: A restaurant selling chickenmeals operates under the trademarkNANDO’S. It has developed a system forpreparing and selling these products,which are sold in large volumes and in auniform manner. The system includesvarious factors that contribute to thesuccess of NANDO’S restaurants,including recipes and methods ofpreparing meals that produce a product ofconsistent quality, the design ofemployees’ uniforms, the design of thebuildings, the design of packaging, andmanagement and accounting systems.NANDO’S imparts its knowledge andexperience to its franchisees and retainsthe right to supervise and control localfranchisees. As a crucial component ofthe franchising agreement the franchiseeswill also be authorized and obliged to use

the NANDO’S trademark.

Courtesy: Nando’s Group Holdings Ltd

Is there any restriction in sellingor assigning your trademark toanother company?

It is increasingly possible to sell or assigna trademark independently from thebusiness that currently owns it. In casesof sale or assignment of a trademark, oneis required to deposit a copy of theagreement or parts of it at the trademarkregistry. Recently, Unilever Plc assigned/sold its house hold trademark KIMBO toBidco Oil Refineries limited, a transactionthat was registered at the Registry.

Do you need to register all smallmodifications to your trademark?

Many trademarks, including some of themost famous trademarks, have slightlychanged or evolved over the years inorder to modernize the image of acompany or adapt to new advertisingmedia. Marks may be changed oradapted, but your company will have to becareful and consult with the trademarkregistry or a competent trademark agentas to whether a specific change willrequire the submission of a newapplication and payment of the relevantfees. For example, Unilever Plc recentlyamended their mark, “ROIKO” to

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“ROYCO”. The company has since thenregistered the new mark.

(Omo to replace royco.)

5. Enforcing your Trademark

What should you do if yourtrademark is being used byothers without authorization?

The burden of enforcing a trademark ismainly on the trademark owner. It is up toyou as a trademark owner to identify anyinfringement, to decide what measuresshould be taken and to enforce trademarkrights.

It is always useful to seek expert advice ifyou believe that someone is infringing yourtrademark. An intellectual property lawyerwould be the right person to give youinformation on the existing measures inthe country and, presumably, also inneighbouring countries to institute actionagainst counterfeiting and infringementand will provide you advice on how toenforce your rights. You may also seekadvice from the Trademarks Registry. TheGovernment has established an advisorycommittee on anti-dumping andcounterfeiting measures that would alsoassist a proprietor where a registeredtrademark is being infringed. KIPI is amember of this committee.

If you are faced with infringement, thenyou may choose to begin by sending aletter (commonly known as a “cease anddesist letter”) to the alleged infringerinforming him/her of the possibleexistence of a conflict between yourtrademark and his/her business activity. Inwriting such a letter, the assistance of atrademark attorney is recommended.

Under the Act, it is a criminal offence toinfringe upon a registered trademark.

If you consider the infringement to bewilful and know the location of theinfringing activity, then you may wish totake surprise action by obtaining, with thehelp of a trademark attorney, a search andseize order (usually, from a competentcourt or the police) to conduct a raidwithout prior notice to the alleged offender.

The infringer may be compelled by thejudicial authorities to inform you of theidentity of persons involved in theproduction and distribution of the infringinggoods or services and their channels ofdistribution. As an effective deterrent toinfringement, the judicial authorities mayorder, upon your request, that infringinggoods and materials be destroyed ordisposed of outside the channels ofcommerce without compensation of anysort.

In order to prevent the importation ofcounterfeit trademark goods, measuresat the international border are available tothe trademark owner in Kenya through theKenya Revenue Authority. As a trademarkowner, it is easier to deal with theinfringing goods at the entry point than todeal with many infringers once the goodshave been distributed in the country

In some instances, an effective way ofdealing with infringement is througharbitration or mediation. Arbitrationgenerally has the advantage of being aless formal, shorter, and cheaperprocedure than court proceedings, and anarbitral award is more easily enforceableinternationally. An advantage of mediationis that the parties retain control of thedispute resolution process. As such, it canhelp to preserve good business relationswith another enterprise with which youmay like to collaborate in the future.

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Useful web sites for further information:

On other intellectual property issues from a business perspective:

www.wipo.int/sme/

On trademarks generally:

- “About IP” at the WIPO web site: http://www.int/about-ip/en/- International Trademark Association: http://www.inta.org- Association of European Trademark Owners: http://www.marques.org/

On practical aspects relating to the registration of marks, see list of web sites of nationaland regional trademark offices available in Annex I or http://www.wipo.int/news/en/links/ipo_web.htm.

On the Madrid System for the International Registration of Marks:

http://www.wipo.int/madrid/en/index.html

For a list of on-line trade mark databases maintained by industrial property officesthroughout the world: http://arbiter.wipo.int/trademark/output.html

On the International Classification of Goods and Services for the Purposes of theRegistration of Marks under the Nice Agreement:

http://www.wipo.int/classifications/en/index.html (under Nice Agreement)

On the International Classification of the Figurative Elements of Marks under the ViennaAgreement:

http://www.wipo.int/classifications/en/index.html (under Vienna Agreement)

On the conflict between trademarks and domain names:

http://arbiter.wipo.int/domains/index.htmlwww.icann.org

On alternative dispute resolution procedures for domain names:

http://arbiter.wipo.int/domains/

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Web site Addresses of National and Regional Trade mark OfficesAndorra http://www.ompa.ad Estonia http://www.epa.ee

Argentina http://www.inpi.gov.ar/ Europe (Office for theHarmonization in the http://oami.eu.int/Internal Market - OHIM)

ARIPO (AfricanRegional Industrial http://www.aripo.wipo.net/ Finland http://www.finlex.fiProperty Organization)

Armenia http://www.armpatent.org France http://www.inpi.fr

Austria http://www.patent.bmwa.gv.at/ Georgia http://www.sakpatenti.org.ge/

Australia http://www.ipaustralia.gov.au/ Germany http://www.dpma.de

Benelux(Benelux Trade marks http://www.bmb-bbm.org/ Hungary http://www.hpo.hu/

Office - BTO)

Bolivia http://www.senapi.gov.bo Iceland http://www.els.stjr.is

Brazil http://www.inpi.gov.br India http://www.patentoffice.nic.in

Bulgaria http://www.bpo.bg/ Ireland http://www.patentsoffice.ie

Canada http://opic.gc.ca Italy http://www.european-patent-office.org/it/

Kenya http://www.kipo.ke.wipo.net

China (Marks) http://www.saic.gov.ch Lithuania http://www.vpb.lt/

China (Hong Kong -SAR) http://www.info.gov.hk/ipd Luxembourg http://www.etat.lu/ec/

China: Macao (SAR) http://www.economia.gov.mo Mexico http://www.impi.gob.mx

Chile http://www.proind.gov.cl Morocco http://www.ompic.org.ma/

Colombia http://www.sic.gov.co New Zealand http://www.iponz.govt.nz

Costa Rica http://www.registronacional.go.cr Norway http://www.patentstyret.no

Democratic People’s http://www.epa.ee OAPI

Republic of Korea (Organisation Africaine de http://www.oapi.wipo.net/

la Propriété Intellectuelle)

Denmark http://www.dkpto.dk/ Peru http://www.indecopi.gob.pe/

Dominican Republic http://www.seic.gov.do/onapi/ Philippines http://www.ipophil.gov.ph/

El Salvador http://www.cnr.gob.sv Poland http://www.uprp.pl/

Portugal http://www.inpi.pt/ Slovenia http://www.uil-sipo.si/

Republic of Macedonia http://www.ippo.gov.mk/ Spain http://www.oepm.es

Republic of Moldova http://www.agepi.md/ Sweden http://www.prv.se

Romania http://www.osim.ro Turkey http://www.turkpatent.gov.tr

Russian Federation http://www.rupto.ru Uruguay http://www.dnpi.gub.uy

Serbia and Montenegro http://yupat.sv.gov.yu United States http://www.uspto.gov

Singapore http://www.ipos.gov.sg Venezuela http://www.sapi.gov.ve

ANNEX I

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International Classification of Goods and Services for the Purposes ofthe Registration of Marks under the Nice Agreement

GOODSClass Goods1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and

forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions;tempering and soldering preparations; chemical substances for preserving foodstuffs; tanningsubstances; adhesives used in industry.

2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants;mordents; raw natural resins; metals in foil and powder form for painters, decorators, printers andartists.

3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring andabrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrice.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles and wicks for lighting.

5. Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dieteticsubstances adapted for medical use, food for babies; plasters, materials for dressings; material forstopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

6. Common metals and their alloys; metal building materials; transportable buildings of metal; materialsof metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small itemsof metal hardware; pipes and tubes of metal; safes; goods of common metal not included in otherclasses; ores.

7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling andtransmission components (except for land vehicles); agricultural implements other than hand-operated;incubators for eggs.

8. Hand tools and implements (hand-operated); cutlery; side arms; razors.

9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling,checking (supervision), life-saving and teaching apparatus and instruments; apparatus andinstruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers,recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cashregisters, calculating machines, data processing equipment and computers; fire-extinguishingapparatus.

10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth;orthopedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, watersupply and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air or water.

13. Firearms; ammunition and projectiles; explosives; fireworks.

14. Precious metals and their alloys and goods in precious metals or coated therewith, not included inother classes; jewellery, precious stones; horological and chronometric instruments.

ANNEX II

25

15. Musical instruments.

16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter;bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’materials; paint brushes; typewriters and office requisites (except furniture); instructional and teachingmaterial (except apparatus); plastic materials for packaging (not included in other classes); printers’type; printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included inother classes; plastics in extruded form for use in manufacture; packing, stopping and insulatingmaterials; flexible pipes, not of metal.

18. Leather and imitations of leather, and goods made of these materials and not included in otherclasses; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips,harness and saddlery.

19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane,wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for allthese materials, or of plastics.

21. Household or kitchen utensils and containers (not of precious metal or coated therewith); combs andsponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain andearthenware not included in other classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes);padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

23. Yarns and threads, for textile use.

24. Textiles and textile goods, not included in other classes; bed and table covers.

25. Clothing, footwear, headgear.

26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wallhangings (non-textile).

28. Games and playthings; gymnastic and sporting articles not included in other classes; decorations forChristmas trees.

29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies,jams, compotes; eggs, milk and milk products; edible oils and fats.

30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made fromcereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard;vinegar, sauces (condiments); spices; ice.

31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals;fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrupsand other preparations for making beverages.

33. Alcoholic beverages (except beers).

34. Tobacco; smokers’ articles; matches.

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SERVICES

35. Advertising; business management; business administration; office functions.

36. Insurance; financial affairs; monetary affairs; real estate affairs.

37. Building construction; repair; installation services.

38. Telecommunications.

39. Transport; packaging and storage of goods; travel arrangement.

40. Treatment of materials.

41. Education; providing of training; entertainment; sporting and cultural activities.

42. Scientific and technological services and research and design relating thereto; industrial analysis andresearch services; design and development of computer hardware and software; legal services.

43. Services for providing food and drink; temporary accommodation.

44. Medical services; veterinary services; hygienic and beauty care for human beings or animals;agriculture, horticulture and forestry services.

45. Personal and social services rendered by others to meet the needs of individuals; security services forthe protection of property and individuals.

In November 2002, 70 States were party to the Nice Agreement. They have adopted and apply the NiceClassification for the purposes of the registration of marks.

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Members of the Madrid Union

Albania (A)Algeria (A)Antigua and Barbuda (P)Armenia (A&P)Australia (P)Austria (A&P)Azerbaijan (A)Belarus (A&P1)Belgium* (A&P)Bhutan (A&P)Bosnia and Herzegovina (A)Bulgaria (A&P)China (A&P)Croatia (A)Cuba (A&P)Czech Republic (A&P)Democratic People’sRepublic of Korea (A&P)Denmark (P)Egypt (A)Estonia (P)Finland (P)France (A&P)Georgia (P)Germany (A&P)Greece (P)Hungary (A&P)Iceland (P)Ireland (P)Italy (A&P)Japan (P)Kazakhstan (A)Kenya (A&P)Kyrgyzstan (A)Latvia (A&P)Lesotho (A&P)

Liberia (A)Liechtenstein (A&P)Lithuania (P)Luxembourg* (A&P)Monaco (A&P)Mongolia (A&P)Morocco (A&P)Mozambique (A&P)Netherlands* (A&P)Norway (P)Poland (A&P)Portugal (A&P)Republic of Moldova (A&P)Romania (A&P)Russian Federation (A&P)San Marino (A)Sierra Leone (A&P)Singapore (P)Slovakia (A&P)Slovenia (A&P)Spain (A&P)Sudan (A)Swaziland (A&P)Sweden (P)Switzerland (A&P)Tajikistan (A)The former YugoslavRepublic ofMacedonia (A)Turkey (P)Turkmenistan (P)Ukraine (A&P)United Kingdom (P)Uzbekistan (A)Viet Nam (A)Yugoslavia (A&P)Zambia (P)

(A) indicates a party to the Agreement (52)(P) indicates a party to the Protocol (55)

• Protection may not be requested separately for Belgium, Luxembourg or the Netherlands, butonly for all three countries as a whole (Benelux), subject to payment of a single complementary orindividual fee.

Disclaimer: The information contained in this guide is not meant as a substitute for professionallegal advice. Its main purpose is limited to providing basic information on trade and service marks.

ANNEX III

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This publication is the nationally customized version of the WIPO publication entitled“Making a mark: An introduction to Trade marks for Small and medium- Sized Enterprises”

Disclaimer: The information contained in this guide is not meant as a substitute for professional legal advice. It’s main purpose is limited to providing basic information.

© 2005

No part of this publication may be reproduced or transmitted in any form or by any means, electronically or mechanically, except as permitted by law, without written permission from the owner of the copyright.

KIPI