Arrangement of Sections
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TRADE MARKS RULES, 1956
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1.Short title
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2.Interpretation
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2.Interpretation
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2.Interpretation
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3.Fees
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4.Forms
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5.Classification of goods
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5.Classification of goods and services
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5....
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6.Application by registered proprietors for conversion of specifications:
Registrar's proposal
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6.Old classifications preserved
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7.Advertisement of proposal opposition
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7.Conversions to new classification system
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8.Conversion of specifications; resulting registrations
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8....
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9.Size, etc., of documents
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9.Size, etc., of documents
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10.Signature of documents by partnerships, companies and associations
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11.Service of documents
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12.Address
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13.Address for service
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14.Agency
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15.Registrable trade marks
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16.Flags, emblems, arms, etc.
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17.Arms of city, etc.
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18.Living persons or persons recently dead
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19.Name or description of goods on a trade mark
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19.Name and description of goods or services on a trade mark
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20.Preliminary advice by Registrar as to distinctiveness
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20.Preliminary advice by Registrar as to distinctiveness
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20.Preliminary advice by Registrar as to distinctiveness
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21.Form of application specification
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21.Form of application specification
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21.Form of application
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22.Representation of mark
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23.Additional forms and representations
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23....
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24.Representations to be durable
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24....
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25.Separate applications
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25.Separate applications
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26.Representations to be satisfactory
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27.Specimens of trade marks in exceptional cases
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28.Series of trade marks
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28.Series of trade marks
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29.Transliteration and translation
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29.Transliteration and translation
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29A.Application to add goods or services
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30.Search
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30.Search
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31.Registrar’s powers on application
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32.Objection by Registrar
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32.Objection by Registrar
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32.Objection by Registrar
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33.Registrar’s conditions, etc., hearing
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33.Registrar’s conditions, etc., hearing
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33.Conditions by Registrar
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34.Decision of Registrar
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34.Decision of Registrar
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34.Decision of Registrar
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35.Disclaimer
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36.Application under section 30 of the Act
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36.Application under section 30 of the Act
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37.Application under section 40 of the Act
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37.Application under section 40 of the Act
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38.Authorisation to proceed
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39.Case, draft regulations
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39.Case, draft regulations
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40.Regulations and application to be open to inspection
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41.Registrar’s refusal
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42.Advertisement of application
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42.Advertisement of application
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43.Wood block or electrotype printing
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43.Representations or information from applicant
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44.Advertisement of series
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44.Advertising of series of trade marks
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45.Advertisements under sections 21 (10) and sections 38 (2)
and 38 (4)
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45.Advertisements under sections 21 (10) and 38 (2) and (4)
of the Act
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45A.Reimbursement for advertisements
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45A.Costs of advertisement
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46.Opposition
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46.Opposition
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47.Notice of opposition
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47.Notice of opposition
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48.Counter-statement
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48.Counter-statement
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49.Evidence in support of opposition
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49.Evidence in support of opposition
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50.Evidence in support of application
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50.Evidence in support of application
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51.Evidence in reply by opponent
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51.Evidence in reply by opponent
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52.Further evidence
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52A.Abandonment of application or opposition
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52A.Abandonment of application or opposition
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53.Exhibits
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54.Hearing
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55.Extension of time
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55....
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56.Security for costs
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57.Costs in uncontested case
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58.Opposition to application under section 40
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58....
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59.Non-completion of registration
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60.Entry in register
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60.Entry in register
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60.Entry in register
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61.Associated marks
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61.Notations indicating association no longer of any effect
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62.Death of applicant before registration
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63.Certificate of registration
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63.Certificate of registration
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64.Renewal of registration
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64.Renewal of registration
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65.Notice before removal of trade mark from register
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65.Notice before removal of trade mark from register
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66.Second notice
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66.Second notice
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67.Advertisement of non-payment
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67.Advertisement of non-payment
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68.Removal of trade mark from register
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68.Removal of trade mark from register
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69.Record of removal of mark
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70.Notice and advertisement of renewal and restoration
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70.Notice and advertisement of renewal and restoration
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71.Joint application for entry of assignment or transmission
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71.Application for entry of assignment or transmission
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72.Application for entry of assignment or transmission by subsequent proprietor
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72....
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73.Particulars to be stated in application
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73.Particulars to be stated in application
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74.Case accompanying application
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74.Case accompanying application
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75.Proof of title
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76.Application for entry of assignment without goodwill
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76.Application for entry of assignment without goodwill
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76.Application for entry of assignment without goodwill
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77.Entry in register
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77.Entry in register
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78.Separate registrations
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78.Separate registrations
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78.Separate registrations
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79.Registrar’s certificate of approval as to certain assignments
and transmissions
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79.Registrar’s certificate of approval as to certain assignments
and transmissions
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80.Registrar’s directions for advertisement of assignment without
goodwill of trade mark in use
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80.Registrar’s directions for advertisement of assignment without
goodwill of trade mark in use
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81.Alteration of address in register
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82.Application to rectify or remove a trade mark from the register
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82.Application to rectify or remove a trade mark from the register
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83.Further procedure
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83.Further procedure
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84.Intervention by third parties
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84A.Application to surrender
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85.Application under section 37 (1)
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85.Application under section 37 (1)
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85.Application under section 37(1)
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86.Evidence
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87.Advertisement of certain applications
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87.Advertisement of certain applications
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88.Certificates of validity to be noted
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88.Certificates of validity to be noted
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89.Alteration of registered mark
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89.Alteration of registered mark
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90.Advertisement before decision
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90.Advertisement before decision
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91.Decision advertisement notification
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91.Decision of Registrar
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92.Advertisement illustration
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92.Advertisement
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93.Rectification of certification trade mark entries by the court
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94.Alteration of regulations
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94.Alteration of regulations
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94A.Application for registration
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95.Application for entry of registered user
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96.Entry and notification
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96.Entry and notification
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97.Registered proprietor’s application to vary entry
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98.Application by registered proprietor or user to cancel entry
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99.Application by any person to cancel entry
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100.Notification and hearing
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100.Notification and hearing
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101.Registered user’s application to correct error or enter change
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102.Extension of Time
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102.Extension of time
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103.Hearing
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104.Application for hearing
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104.Application for hearing
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105.Notice of hearing
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106.Notification of decision
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107.Dispensing with evidence
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108.Amendments of documents
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108.Amendments of documents
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109.Certificates by Registrar
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110.Marks registered without limitation of colour
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111.Certificates for use in obtaining registration abroad
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112.Person before whom declaration is to be taken
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113.Presumption as to seal of officer taking declaration
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114.Searches
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114.Searches
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114.Searches
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115.Textile goods
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115.Textile goods
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115.Copies of documents
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116.Metal goods
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116.Metal goods
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116....
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117.Appeal to court
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118.Applications to court
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119.Order of court
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120.Publication of order of court
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120.Publication of order of court
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121.Submission of electronic documents
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TRADE MARKS RULES, 1956
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TRADE MARKS RULES, 1956
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TRADE MARKS RULES, 1956
ARRANGEMENT OF RULES
Preliminary
Fees and Forms
Classifications under Previous System
6. |
Old classifications preserved.
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7. |
Conversions to new classification system.
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Documents
9. |
Size, etc., of documents.
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10. |
Signature of documents by partnerships, companies and associations.
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11. |
Service of documents.
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Address
Agents
Registrable Trade Marks and Preliminary Advice (
Section 43
)
15. |
Registrable trade marks.
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16. |
Flags, emblems, arms, etc.
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18. |
Living persons or persons recently dead.
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19. |
Name and description of goods or services on a trade mark.
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20. |
Preliminary advice by Registrar as to distinctiveness.
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Application for Registration of a Trade Mark
22. |
Representation of mark.
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25. |
Separate applications.
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26. |
Representations to be satisfactory.
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27. |
Specimens of trade marks in exceptional cases.
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28. |
Series of trade marks.
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29. |
Transliteration and translation.
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29A. |
Application to add goods or services.
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Procedure on Receipt of Application for Registration of a Trade Mark
31. |
Registrar’s powers on application.
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32. |
Objection by Registrar.
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33. |
Conditions by Registrar.
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34. |
Decision of Registrar.
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Defensive Trade Marks
Certification Trade Marks
38. |
Authorisation to proceed.
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39. |
Case, draft regulations.
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40. |
Regulations and application to be open to inspection.
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Advertisement of Application
42. |
Advertisement of application.
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43. |
Representations or information from applicant.
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44. |
Advertising of series of trade marks.
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45. |
Advertisements under sections 21(10) and 38(2) and (4) of the Act.
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45A. |
Costs of advertisement.
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Opposition to Registration
47. |
Notice of opposition.
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49. |
Evidence in support of opposition.
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50. |
Evidence in support of application.
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51. |
Evidence in reply by opponent.
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52A. |
Abandonment of application or opposition.
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57. |
Costs in uncontested case.
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Non-Completion
59. |
Non-completion of registration.
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Entry in the Register, and Associated Marks
61. |
Notations indicating association no longer of any effect.
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62. |
Death of applicant before registration.
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63. |
Certificate of registration.
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Renewal
64. |
Renewal of registration.
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65. |
Notice before removal of trade mark from register.
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67. |
Advertisement of non-payment.
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68. |
Removal of trade mark from register.
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69. |
Record of removal of mark.
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70. |
Notice and advertisement of renewal and restoration.
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Assignments and Transmissions
71. |
Application for entry of assignment or transmission.
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73. |
Particulars to be stated in application.
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74. |
Case accompanying application.
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76. |
Application for entry of assignment without goodwill.
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78. |
Separate registrations.
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79. |
Registrar’s certificate or approval as to certain assignments and transmissions.
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80. |
Registrar’s directions for advertisement of assignment without goodwill of trade mark in use.
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Alteration of Address
81. |
Alteration of address in register.
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Applications to the Registrar for Rectification (Sections 29, 30, 35 and 36)
82. |
Application to rectify or remove a trade mark from the register.
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84. |
Intervention by third parties.
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Surrender of a Registered Trade Mark
84A. |
Application to surrender.
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Applications for Alteration of the Register by Correction, Change, Cancellation or Striking out Goods or for Entry of Disclaimer, Memorandum or Note (
Section 37
(1))
87. |
Advertisement of certain applications.
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88. |
Certificates of validity to be noted.
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Applications to Alter Registered Trade Marks
89. |
Alteration of registered mark.
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90. |
Advertisement before decision.
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91. |
Decision of Registrar.
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Court Orders for Rectification of Certification Trade Mark Entries and Regulations
93. |
Rectification of certification trade mark entries by the court.
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Alteration of Certification Trade Mark Regulations
94. |
Alteration of regulations.
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Collective Trade Marks
94A. |
Application for registration.
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Registered Users
95. |
Application for entry of registered user.
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96. |
Entry and notification.
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97. |
Registered proprietor’s application to vary entry.
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98. |
Application by registered proprietor or user to cancel entry.
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99. |
Application by any person to cancel entry.
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100. |
Notification and hearing.
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101. |
Registered user’s application to correct error or enter change.
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Extension of Time
Discretionary Power
104. |
Application for hearing.
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106. |
Notification of decision.
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Power to Dispense with Evidence
107. |
Dispensing with evidence.
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Amendments
108. |
Amendments of documents.
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Certificates
109. |
Certificates by Registrar.
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110. |
Marks registered without limitation of colour.
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111. |
Certificates for use in obtaining registration abroad.
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Declarations
112. |
Person before whom declaration is to be taken.
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113. |
Presumption as to seal of officer taking declaration.
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Search
Copies
115. |
Copies of documents.
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Appeals to the court
Applications to and Orders of the court
118. |
Applications to court.
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120. |
Publication of order of court.
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Submission of Documents in Electronic Form
121. |
Submission of electronic documents.
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SCHEDULES
SECOND SCHEDULE — |
DELETED
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TRADE MARKS RULES, 1956
[L.N. 575/1956, L.N. 454/1959, L.N. 44/1970, L.N.
138/1971, L.N. 131/1975, L.N. 249/1988, L.N. 50/1991, L.N. 41/1995,
L.N. 42/1995, L.N. 146/2003.]
RULES UNDER SECTIONS 39 AND 41
Preliminary
1. |
Short title
These Rules may be cited as the Trade Marks Rules, 1956.
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2. |
Interpretation
In these Rules, unless the context otherwise requires, the following expressions have the meanings hereby assigned to them respectively, that is to say—
“agent” means an advocate of the Supreme Court; also any person who before the appointed day was a Trade Mark Agent recognised by the Registrar;
“appointed day” means the 1st day of January, 1957;
“office” means the office of the Registrar of Trade Marks;
“specification” means the designation of goods in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered.
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2. |
Interpretation
In these Rules, unless the context otherwise requires, the following expressions have the meanings hereby assigned to them respectively, that is to say—
“agent” means an advocate as defined in the Advocates Act;
“appointed day” means the 1st day of January, 1957;
“office” means the office of the Registrar of Trade Marks;
“specification” means the designation of goods or classes of goods or classes of goods or the description of services or classes of services in respect of which a trade mark, or a registered user or a trade mark, is registered or proposed to be registered.
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2. |
Interpretation
In these Rules, except where the context otherwise requires—
“agent” means a person appointed as an agent under rule 14;
“specification” means the designation of goods or classes of goods or the description of services or classes of services in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered;
“the office” means the office of the Registrar.
Fees and Forms
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3. |
Fees
The fees to be paid in relation to trade marks shall be those prescribed in the First Schedule.
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4. |
Forms
The forms referred to herein are the forms contained in the Fourth Schedule, and those forms shall be used in all cases to which they are applicable and shall be modified as directed by the Registrar to meet other cases.
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5. |
Classification of goods
(1) |
For the purposes of trade marks registrations dated before the appointed day, and of registrations of registered users thereunder, goods are classified in the manner appearing in Schedule II, unless any specification has been converted to Schedule III in accordance with rule 6.
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(2) |
For the purposes of trade marks registrations dated on or after the appointed day, and of registrations of registered users thereunder, and for the purposes of any registrations dated before that day whereof the specifications have been converted in accordance with rule 6, goods are classified in the manner appearing in Schedule III.
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5. |
Classification of goods and services
(1) |
For the purposes of trade marks registrations dated before the appointed day, and of registrations of registered users thereunder, goods are classified in the manner appearing in the Second Schedule; unless, specification has been converted to Part I of the Third Schedule in accordance with rule 6.
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(2) |
For the purposes of trade marks registrations dated on or after the appointed day, and of registrations of registered users thereunder, and for the purposes of any registration dated before that day whereof the specifications have been converted in accordance with rule 6, goods are classified in the manner appearing in Part I of the Third Schedule.
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(3) |
For the purposes of service marks registrations, services are, classified in accordance with Part II of the Third Schedule.
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5. |
Deleted by L.N. 146/2003, r. 3.
Classifications under Previous System
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6. |
Application by registered proprietors for conversion of specifications:
Registrar's proposal
Where the specification of a registered trade mark is founded on Schedule II the registered proprietor may apply to the Registrar on Form TM 43 for the conversion of that specification so that it may be founded on Schedule III, whether with or without the striking-out of goods therefrom, but so that the registration retains its original date, and shall include in the application a request for the like conversion of the specification of the goods of any registered users under that registration. Thereupon the Registrar in accordance with section 39 (3) shall notify in writing to the registered proprietor a proposal showing the form which, in the Registrar's view, the amendment of the register should take. Two or more registrations of a trade mark in respect of goods falling within the same class of Schedule III, having the same date of registration, may be amalgamated upon conversion in accordance with this rule.
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6. |
Old classifications preserved
(1) |
This rule applies with respect to a trade mark registered for goods or services classified in accordance with a classification system that has been amended or replaced since those goods or services were classified.
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(2) |
The goods or services described in paragraph (1) are not required to be reclassified in accordance with the new classification system unless application is made under rule 7.
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7. |
Advertisement of proposal opposition
The advertisement of a proposal for amendment under section 39 (3) shall be made in the Gazette, and a notice of any opposition shall be given on Form TM 44 within one month from the date of the advertisement, and shall be accompanied by a duplicate of the notice and by a statement in duplicate showing how the proposed amendment would be contrary to section 39 (2) the Registrar shall forthwith send the duplicate copies to the registered proprietor who may, within one month from the receipt of such duplicates, send to the Registrar a counter-statement setting out fully the grounds on which the opposition is contested and if he does so he shall deliver to the opponent a copy thereof. The Registrar may thereupon require or admit evidence directed to the questions in issue, and if so desired by either party he shall, before deciding the matter, give the parties an opportunity of being heard thereon.
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7. |
Conversions to new classification system
(1) |
The registered proprietor of a trade mark described in rule 6(1) may apply to have the classification of the goods or services in respect of which the trade mark was registered adapted so that they are classified in accordance with section 6(2) of the Act.
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(2) |
An application under this rule shall be made to the Registrar in Form TM 43.
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(3) |
The Registrar shall determine what amendment he proposes to make in relation to an application under this rule and shall notify the applicant of that proposal as required under section 39(3) of the Act.
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(4) |
The advertisement of the proposed amendment required under section 39(3) of the Act shall be made in the Journal or the Kenya Gazette.
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(5) |
A person who wishes to oppose the proposed amendment shall do so by filing a notice of opposition with the Registrar within thirty days after the date of advertisement.
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(6) |
The notice of opposition shall be in Form TM 44 and shall be filed in duplicate.
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(7) |
The notice of opposition shall be accompanied by a statement, in duplicate, showing how the proposed amendment would be contrary to section 39(2) of the Act.
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(8) |
The Registrar shall send the duplicate copies of the notice of opposition and the accompanying statement to the applicant.
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(9) |
The applicant may file a counter-statement with the Registrar setting out fully the grounds on which the applicant contests the opposition.
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(10) |
The counter-statement shall be in Form TM 7 and shall be filed in duplicate within thirty days after the applicant received the notice of opposition.
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(11) |
The Registrar may allow or require evidence to be adduced and, if the Registrar so decides, rules 49 to 52 shall apply, with necessary modifications, subject to any directions given by the Registrar.
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(12) |
Before deciding the matter, the Registrar shall give the parties an opportunity to be heard if either party requests it.
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(13) |
If a party requests an opportunity to be heard, the Registrar shall give notice to the parties of a date when he will hear the arguments in the case.
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(14) |
An appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice.
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(15) |
Within seven days after the receipt of the notice a party who intends to appear shall so notify the Registrar in Form TM 8.
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(16) |
A party who receives notice and who does not, within seven days after the receipt of the notice, notify the Registrar in Form TM 8 that he intends to appear, may be treated as not desiring to be heard and the Registrar may act accordingly.
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(17) |
The Registrar shall make the entries in the register that are necessary to give effect to a request to adapt a classification if—
(a) |
the time for filing a notice of opposition has expired without such a notice being filed; or
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(b) |
a notice of opposition has been filed but the Registrar has decided to allow the request.
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(18) |
If the Registrar makes an entry under subrule (17) he shall also enter the date when that entry was made.
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(19) |
No entry under this rule shall affect the period of registration of a trade mark or when it may be renewed.
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8. |
Conversion of specifications; resulting registrations
When a proposal for the conversion of a specification in accordance with rule 6 has been advertised and has not been opposed and the time for notice of opposition has expired, or having been opposed the opposition has been determined and a conversion allowed, the Registrar shall make all the entries in the register necessary to give effect to the conversion in accordance with the proposal as advertised, or the proposal as amended after opposition or appeal thereon and published subsequently in the Gazette, and shall enter in the register the date when such entries were made. The expression "the expiration of the last registration" shall have regard to the same date in the case of all the resulting entries for the purpose of determining the next renewal thereof in accordance with section 23 as it had with regard to the registration before conversion.
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8. |
Deleted by L.N. 146/2003, r. 4.
Documents
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9. |
Size, etc., of documents
Subject to any other directions that may be given by the Registrar, all applications, notices, counter-statements, papers having representations affixed, or other documents authorised or required by the Act or these Rules to be made, left or sent, at or to the office or with or to the Registrar or the Court, shall be on foolscap paper of a size approximately 13 inches by 8 inches, and shall have on the left-hand part thereof a margin of not less than 1 1/2 inches.
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9. |
Size, etc., of documents
Subject to any other directions that may be given by the Registrar, all applications, notices, counter-statements, papers having representations affixed or other documents authorized or required by the Act or these Rules to be made, left or sent, at or to the office or with or to the Registrar or the court, shall be
on strong non-absorbent paper of a size approximately 297 mm by approximately
210 mm, and shall have on the left-hand part thereof a margin of not
less than 35 mm. [L.N. 42/1995, s. 5.]
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10. |
Signature of documents by partnerships, companies and associations
(1) |
A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any qualified partner stating that he signs on behalf of the partnership, or by any other person who satisfies the Registrar that he is authorized to sign the document.
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(2) |
A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he is authorized to sign the document.
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(3) |
A document purporting to be signed for or on behalf of an association of persons may be signed by any person who appears to the Registrar to be duly qualified.
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11. |
Service of documents
(1) |
All applications, notices, statements, papers having representations affixed or other documents authorized or required by the Act or these Rules to be made, left or sent, at or to the office, or with or to the Registrar or the court or any other person, may be sent through the post by a prepaid or official paid letter.
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(2) |
Any application or any document so sent shall be deemed to have been made, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post; and in proving the sending it shall be sufficient to prove that the letter was properly addressed and put into the post.
Address
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12. |
Address
(1) |
Where any person is by the Act or these Rules bound to furnish the Registrar with an address, the address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of trade or business of the person whose address is given.
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(2) |
The Registrar may require the address to include the name of the street and the plot number in the street of the premises.
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13. |
Address for service
(1) |
The Registrar may require an applicant, opponent or agent, or a registered proprietor or registered user of a trade mark, who does not reside or carry on business within Kenya to give an address for service within Kenya, and that address may be treated as the actual address of that person for all purposes connected with the matter in question.
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(2) |
Any registered proprietor or registered user of a trade mark, or any person about to be registered as such, may give in Form TM 32 an address for service for entry in the register, and such address may be entered by the Registrar.
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(3) |
All applications in Form TM 32 under this rule shall be signed by the applicant for registration or the registered proprietor or registered user, as the case may be, or by an agent expressly authorized by him for the purpose of such an application, unless in exceptional circumstances the Registrar otherwise allows.
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(4) |
In any case in which no address for service is entered in the register, the Registrar may treat the trade or business address of the registered proprietor or registered user as therein entered as his address for service for all purposes connected with the registration.
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(5) |
Any written communication addressed to a party or person as aforesaid at an address given by him, or treated by the Registrar, as his address for service shall be deemed to be properly addressed.
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(6) |
The Registrar, at any time that a doubt arises as to the continued availability of an address for service entered in the register, may request the person for whom it is entered, by letter addressed to his trade or business address in the register, to confirm the address for service, and if within three months of making such a request the Registrar receives no confirmation of that address he may strike it off the register.
Agents
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14. |
Agency
(1) |
Except as otherwise required by these Rules, any application, request or notice which is required or permitted by the Act or these Rules to be made or given to the Registrar or the court, and all other communications between an applicant or a person making such a request or giving such a notice and the Registrar, or the court, and between the registered proprietor or a registered user of a trade mark and the Registrar or the court or any other person, may be signed, made or given by or through an agent.
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(2) |
Any such applicant, person making request or giving notice, proprietor or registered user may appoint an agent to act for him in any proceeding or matter before or affecting the Registrar or the court under the Act and these Rules by signing and sending to the Registrar or the court, as the case may be, an authority to that effect in Form TM 1 or in such other written form as the Registrar or the court may deem sufficient.
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(3) |
In case of such appointment, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so appointing him, all communications directed to be made to that person in respect of the proceeding or matter may be addressed to the agent, and all attendances upon the Registrar relating thereto may be made by or through the agent.
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(4) |
In any particular case the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, registered user or other person.
Registrable Trade Marks and Preliminary Advice (Section 43)
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15. |
Registrable trade marks
(1) |
The Registrar may refuse to accept any application for the registration of a mark upon which any of the following appear—
(a) |
the words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “Entered at Stationer’s Hall” or “To counterfeit this is a forgery”, or words to similar effect;
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(b) |
representations of the Head of State of any foreign state, or any colourable imitation thereof;
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(c) |
the words “Red Cross”, or “Geneva Cross”, and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours.
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(2) |
Where there appears in a trade mark the registration of which is applied for a representation of a cross in any colour, not being one of those mentioned in paragraph (c) of subrule (1), the Registrar may require the applicant as a condition of acceptance to undertake not to use the cross device on red, or in white on a red ground or silver on a red ground, or in any similar colour or colours.
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16. |
Flags, emblems, arms, etc.
Representations in any form of any of the following, or any device so nearly resembling them as to be likely to lead to mistake, may not appear on trade marks the registration of which is applied for—
(a) |
without the written permission of the competent authority, any specified emblem, specified likeness or specified name within the meaning of section 2 of the National Flag, Emblems and Names Act (Cap. 99);
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(b) |
without the written permission of the competent authority, any honour or award, or any title or abbreviation of a title thereof, created by the President;
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(c) |
any armorial bearing, insignia or flag of any foreign state or international intergovernmental organization;
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(d) |
any honour or award, or any title or abbreviation of a title thereof, of any foreign state;
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(e) |
any title or abbreviation thereof of any international inter governmental organization.
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17. |
Arms of city, etc.
Where a representation in any form of the armorial bearings, insignia, orders of chivalry, decorations or flags of any city, borough, town, place, society, body corporate, institution or person appears on a mark, the Registrar, before proceeding to register the mark, may require to be furnished with a consent to the registration and use of those emblems from such official or other person as appears to the Registrar to be entitled to give consent, and in default of that consent he may refuse to register the mark.
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18. |
Living persons or persons recently dead
Where the name or representation of any person appears on a trade mark, the Registrar may require, before proceeding to register the mark to be furnished with consent from him or, in the case of a person recently dead, from his legal representatives, and in default of that consent he may refuse to register the mark.
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19. |
Name or description of goods on a trade mark
(1) |
Where the name or description of any goods appears on a trade mark the Registrar may refuse to register such mark in respect of any goods other than the goods so named or described.
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(2) |
Where the name or description of any goods appears on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods, and in that case the applicant shall state in his application that the name or description will be varied when the mark is used upon goods covered by the specification other than the named or described goods.
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19. |
Name and description of goods or services on a trade mark
(1) |
Where the name or description of any goods or the name or description of any services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services, as the case may be, other than the goods or services so named or described.
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(2) |
Where the name or description of any goods or the name or description of any services appears on a trade mark, and the name or description in use varies, the Registrar may permit the registration of the mark for these and other goods or services, as the case may be, and in that case the applicant shall state in his application that the name or description will be varied when the mark is used upon goods or services covered by the specification other than the named or described goods or services.
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20. |
Preliminary advice by Registrar as to distinctiveness
(1) |
Any person who proposes to apply for the registration of a trade mark in Part A or Part B of the register in respect of any goods may apply to the Registrar on Form TM 28 or on Form TM 27 in a case where he is also making an application under rule 114 for advice as to whether the trade mark, of which duplicate representations shall accompany the form, appears to the Registrar prima facie to be inherently adapted to distinguish within the meaning of section 12 or inherently capable of distinguishing within the meaning of section 13 as the case may be in relation to those goods, and shall apply separately in relation to goods comprised within different classes of goods in Schedule III.
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(2) |
A notice of withdrawal of an application for the registration of a trade mark given under section 43 (3) for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given in writing within two months from the date of the notice of the Registrar's objection.
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20. |
Preliminary advice by Registrar as to distinctiveness
(1) |
Any person who proposes to apply for the registration of a trade mark in Part A or Part B of the register in respect of any goods or services may apply to the Registrar on Form TM 28 or on Form TM 27 in a case where he is also making an application under rule 114 for advice as to whether the trade mark, of which duplicate representations shall accompany the form, appears to the Registrar prima facie to be inherently adapted to distinguish within the meaning of section 12 or inherently capable of distinguishing within the meaning of section 13 as the case may be in relation to those goods or services, and shall apply separately in relation to goods or services comprised within different classes of goods or services in Schedule III.
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(2) |
A notice of withdrawal of an application for the registration of a trade mark given under section 43 (3) for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given in writing within two months from the date of the notice of the Registrar's objection.
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20. |
Preliminary advice by Registrar as to distinctiveness
(1) |
A person who proposes to apply for the registration of a trade mark in relation to goods or services may apply to the Registrar for advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish the goods or services within the meaning of section 12 of the Act or to be inherently capable of distinguishing the goods or services within the meaning of section 13 of the Act.
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(1A) |
An application under paragraph (1) shall be in Form TM 27 and shall be accompanied by duplicate representations of the trade mark.
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(2) |
A notice of withdrawal of an application for the registration of a trade mark given under subsection (3) of section 43 of the Act for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given in writing within two months from the date of the notice of the Registrar’s objection.
Application for Registration of a Trade Mark
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21. |
Form of application specification
(1) |
An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. For a trade mark other than a Certification or Defensive trade mark the application shall be made on Form TM 2. For a Certification or a Defensive trade mark the application shall be made on Form TM 5 or Form TM 31 respectively. Each application shall be for registration in respect of goods in one class of Schedule III only.
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(2) |
Every application claiming priority under section 67 of the Act shall state the date of the application in the United Kingdom or foreign state and the applicant shall furnish a certificate by the Registrar or other registering authority of that country or shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar.
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(3) |
In the case of an application for registration in respect of all the goods included in a class, or of a large variety of goods, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if it is registered.
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21. |
Form of application specification
(1) |
An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. For a trade mark other than a Certification or Defensive trade mark the application shall be made on Form TM 2. For a Certification or a Defensive trade mark the application shall be made on Form TM 5 or Form TM 31 respectively. Each application shall be for registration in respect of goods or services, as the case may be, in only one class specified in the case of goods in Part I of the Third Schedule and in the case of services in Part II of that Schedule.
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(2) |
Every application claiming priority under section 67 of the Act shall state the date of the application in the United Kingdom or foreign state and the applicant shall furnish a certificate by the Registrar or other registering authority of that country or shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar.
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(3) |
In the case of an application for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if it is registered.
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21. |
Form of application
(1) |
An application to the Registrar for registration of a trade mark shall be in Form TM 2 and shall be signed by the applicant or his agent.
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(2) |
Every application claiming priority under section 65 of the Act shall state the date of the application in the United Kingdom or foreign state, and the applicant shall furnish a certificate by the Registrar or other registering authority of that country, or shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar.
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(3) |
In the case of an application for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if it is registered.
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(4) |
An application for registration of a trade mark that is three dimensional shall include a statement to that effect.
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(5) |
An application for registration of a trade mark of which colour is claimed as an element shall include a statement to that effect.
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(6) |
An application for registration of a trade mark that includes a word without regard to its graphical form shall include a statement to that effect.
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(7) |
The specification of an application for registration of a trade mark for goods or services in more than one class, shall set out the classes in the same order as they appear in the classification referred to in section 6(2) of the Act.
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22. |
Representation of mark
(1) |
Every application for the registration of a trade mark shall contain a representation of the mark in the space provided on the application form for that purpose.
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(2) |
Where the representation exceeds the space in size, the representation shall be mounted upon linen, tracing cloth or such other material as the Registrar may consider suitable; part of the mounting shall be affixed in the space and the rest may be folded.
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23. |
Additional forms and representations
There shall be sent with every application for registration of a trade mark at least four additional representations of such mark on Form TM 3 exactly corresponding to that affixed to the application form and noted with all such particulars as may from time to time be required by the Registrar. Such particulars shall, if required, be signed by the applicant or his agent.
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23. |
Deleted by L.N. 146/2003, r. 7.
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24. |
Representations to be durable
All representations of marks must be of a durable nature, but the applicant may in case of need supply, in place of representations on Form TM 3, representations on sheets of strong paper of the size prescribed in rule 9 and noted as aforesaid.
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24. |
Deleted by L.N. 146/2003, r. 7.
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25. |
Separate applications
Applications for the registration of the same mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 6 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.
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25. |
Separate applications
Applications for the registration of the same mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods or services in more than one class, whether on conversion of the specification under rule 6 or otherwise, the registration in respect of the goods or services included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.
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26. |
Representations to be satisfactory
The Registrar, if dissatisfied with any representation of a mark, may at any time require another representation satisfactory to him to be submitted before proceeding with the application.
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27. |
Specimens of trade marks in exceptional cases
(1) |
Where a drawing or other representation or specimen cannot be given as prescribed in these Rules, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.
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(2) |
The Registrar may also, in exceptional cases, deposit in the office a specimen or copy of any trade mark which cannot conveniently be shown by a representation, and may refer thereto in the register in such manner as he may think fit.
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28. |
Series of trade marks
Where application is made for the registration of a series of trade marks under section 24 (2) a representation of each trade mark of the series shall be included, all as aforesaid, in the application form, in the duplicate thereof (if any), and in each of the accompanying Forms TM 3.
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28. |
Series of trade marks
If application is made for the registration of a series of trade marks under section 24(3) of the Act, a representation of each trade mark in the series shall be included in the application.
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29. |
Transliteration and translation
(1) |
Where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, and on each of the accompanying Forms TM 3, a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
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(2) |
Where a trade mark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.
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29. |
Transliteration and translation
(1) |
Where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, a sufficient transliteration and translation to the satisfaction of the Registrar of each of the words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
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(2) |
Where a trade mark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and the translation and name, if he so requires, shall be so endorsed and signed.
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29A. |
Application to add goods or services
(1) |
The proprietor of a registered trade mark may apply to the Registrar to add goods or services to the goods or services in respect of which the trade mark is registered, including goods or services in an additional class or classes.
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(2) |
An applicant for the registration of a trade mark may apply to the Registrar to amend the application to add goods or services to the goods or services in respect of which the trade mark would be registered, including goods or services in an additional class or classes.
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(3) |
An application under this rule shall be in Form TM 55.
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(4) |
These Rules shall apply, with necessary modifications, with respect to an application under this rule as though it were an application for registration of a trade mark.
Procedure on Receipt of Application for Registration of a Trade Mark
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30. |
Search
Upon receipt of an application for the registration of trade mark in respect of any goods the Registrar shall cause a search to be made, amongst the registered marks and pending applications, for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark applied for, or which so nearly resemble it as to render the mark applied for likely to deceive or cause confusion, and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.
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30. |
Search
Upon receipt of an application for the registration of a trade mark in respect of any goods or services, as the case may be, the Registrar shall cause a search to be made amongst the registered marks and pending applications for the purpose of ascertaining whether—
(a) |
in the case of an application relating to goods, there are on record for the same goods or for the same description of goods or for services or a description of services associated with the goods or goods of that description; or
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(b) |
in the case of application relating to services, there are on record for the same services or for the same description of services or for goods or a description of goods associated with the services of that description,
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any marks identical with the mark applied for, or which so nearly resembles it as to render the mark applied for likely to deceive or cause confusion, and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.
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31. |
Registrar’s powers on application
After a search, and consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar may accept the application absolutely, or he may object to it, or he may express his willingness to accept it subject to such conditions, amendments, disclaimer, modifications or limitations as he may think right to impose.
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32. |
Objection by Registrar
If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within two months the applicant applies for a hearing or makes a considered reply in writing to those objections he shall be deemed to have withdrawn his application.
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32. |
Objection by Registrar
If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within three months from the date of communication the applicant applies for a hearing or makes a considered reply in writing to those objections he shall be deemed to have withdrawn his application.
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32. |
Objection by Registrar
If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within ninety days from the date of the communication the applicant applies for a hearing or makes a considered reply in writing to those objections he shall be deemed to have withdrawn his application.
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33. |
Registrar’s conditions, etc., hearing
If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate such willingness to the applicant in writing, and, if the applicant objects to such conditions, amendments, disclaimer, modifications or limitations, he shall within one month from the date of the communication apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application. If the applicant does not object to such conditions, amendments, disclaimer, modifications or limitations, he shall forthwith notify the Registrar in writing, and alter his application accordingly.
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33. |
Registrar’s conditions, etc., hearing
If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate such willingness to the applicant in writing, and, if the applicant objects to such conditions, amendments, disclaimer, modifications or limitations, he shall within three months from the date of the communication apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application. If the applicant does not object to such conditions, amendments, disclaimer, modifications or limitations, he shall within one month from the date of receipt of the Registrar’s communication notify the Registrar in writing, and alter his application accordingly.
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33. |
Conditions by Registrar
(1) |
If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate his willingness to the applicant in writing, and, if the applicant objects to the conditions, amendments, disclaimer, modifications or limitations, he shall within ninety days from the date of the communication apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application.
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(2) |
If the applicant does not object to the conditions, amendments, disclaimer, modifications or limitations, he shall within thirty days from the date of receipt of the Registrar’s communication, notify the Registrar in writing, and alter his application accordingly.
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34. |
Decision of Registrar
(1) |
The decision of the Registrar, at a hearing as in rule 32 or rule 33, or without a hearing if the applicant has duly communicated his considered objections or considered reply, in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant objects to such decision he may within one month by applying upon Form TM 4, require the Registrar to state in writing the grounds of, and the materials used by him in arriving at his decision.
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(2) |
In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues such statement in writing. The date when such statement is sent to the applicant shall be deemed to be the date of the Registrar's decision for the purpose of appeal.
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34. |
Decision of Registrar
(1) |
The decision of the Registrar, at a hearing as in rule 32 or rule 33, or without a hearing if the applicant has duly communicated his considered objections or considered reply, in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant objects to such decision he may within one month from the date of receipt of the decision by applying upon Form TM 4, require the Registrar to state in writing the grounds of, and the materials used by him in arriving at his decision.
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(2) |
In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues such statement in writing. The date when such statement is sent to the applicant shall be deemed to be the date of the Registrar's decision for the purpose of appeal.
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34. |
Decision of Registrar
(1) |
The decision of the Registrar, at a hearing under rule 32 or rule 33, or without a hearing if the applicant has duly communicated his considered objections or considered reply, in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant objects to the decision he may within thirty days from the date of receipt of the decision, by applying in Form TM 4, require the Registrar to state in writing the grounds of, and the materials used by him in arriving at, his decision.
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(2) |
In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues the statement in writing; and the date when the statement is sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of appeal.
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35. |
Disclaimer
The Registrar may call on an applicant to insert in his application such disclaimer as the Registrar may think fit, in order that the public generally may understand what the applicant’s rights, if his mark is registered, will be.
Defensive Trade Marks
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36. |
An application for the registration of a defensive trade mark under section 30 shall be made, addressed and sent to the Registrar on Form TM 31, and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration made by the applicant or some other person approved for the purpose by the Registrar. The applicant may send with this declaration, or subsequently, such other evidence as he may desire to furnish, whether after request made by the Registrar or otherwise, and the Registrar shall consider the whole of the evidence before deciding on the application. In all other respects, and where they are appropriate and it is not otherwise stated, these Rules shall apply to such applications as they apply to applications for the registration of ordinary trade marks.
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36. |
(1) |
An application to the Registrar for registration of a defensive trade mark under section 30 of the Act shall be in Form TM 2 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration made by the applicant or some other person approved for the purpose by the Registrar.
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(2) |
The applicant may send with this declaration, or subsequently, such other evidence as he may desire to furnish, whether after request made by the Registrar or otherwise, and the Registrar shall consider the whole of the evidence before deciding on the application.
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(3) |
In all other respects, and where they are appropriate and it is not otherwise stated, these Rules shall apply to such applications as they apply to applications for the registration of ordinary trade marks.
Certification Trade Marks
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37. |
An application for the registration of a certification trade mark under section 40 shall be made to the Registrar upon Form TM 5, and shall be accompanied by two duplicates of the application on copies of Form TM 5, and by six additional representations of the trade mark on Form TM 3.
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37. |
An application to the Registrar for registration of a certification trade mark under section 40 of the Act shall be in Form TM 2.
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38. |
Authorisation to proceed
These Rules shall apply to applications under rule 37 as they apply to applications for the registration of ordinary trade marks, except that the applicant shall not be deemed to have abandoned his application if in the circumstances of rule 32 or rule 33 he does not apply for a hearing or reply in writing.
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39. |
Case, draft regulations
The applicant shall send to the Registrar with his application or when required by the Registrar a case setting out the grounds on which he relies in support of his application together regulations for governing the use of the mark and Form TM 33, all being in duplicate. The Registrar may communicate to the applicant any observations he may have to make on the sufficiency of t modify he case or the suitability of the draft regulations and the applicant may either of those documents.
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39. |
Case, draft regulations
(1) |
The applicant shall send to the Registrar, with his application or when required by the Registrar, a case setting out the grounds on which he relies in support of his application together with draft regulations for governing the use of the mark, all in duplicate.
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(2) |
The Registrar may communicate to the applicant any observations he may have to make on the sufficiency of the case or the suitability of the draft regulations and the applicant may modify either of those documents.
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40. |
Regulations and application to be open to inspection
If the Registrar decides to accept the application the regulations for governing the use of the mark approved by the Registrar, as well as the form of application, shall be open to public inspection.
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41. |
Registrar’s refusal
If the Registrar decides to refuse to accept the regulations or to accept the regulations subject to conditions, limitations, amendments or modifications, he shall inform the applicant of his objections in writing and shall, if required, hear the applicant.
Advertisement of Application
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42. |
Advertisement of application
(1) |
An application for the registration of a trade mark required or permitted to be advertised by section 21 (1) or subparagraph (1) of paragraph 2 of the First Schedule to the Act, shall be advertised in the Gazette during such times an such manner as the Registrar may direct. In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant, the words “By Consent” shall appear in the advertisement.
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(1A) |
Where an application for the registration of a trade mark which has been advertised under paragraph (1) of this Rule is subsequently withdrawn by the applicant, such withdrawal shall be advertised in the Gazette during such times and in such manner as the Registrar may direct.
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(2) |
If no representation of the trade mark be included in the advertisement of the application, the Registrar shall refer in such advertisement to the place or places where a specimen or representation of the trade mark is deposited for exhibition.
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42. |
Advertisement of application
(1) |
An application for the registration of a trade mark shall be advertised in the Journal or Kenya Gazette in such manner as the Registrar may direct.
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(1A) |
If an application that has been advertised under paragraph (1) is withdrawn, the withdrawal shall be advertised in the Journal or Kenya Gazette in such manner as the Registrar may direct.
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(2) |
In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant, the words “By Consent” shall appear in the advertisement.
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(3) |
If no representation of the trade mark is included in the advertisement of the application, the Registrar shall refer in the advertisement to the place or places where a specimen or representation of the trade mark is deposited for exhibition.
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43. |
Wood block or electrotype printing
For the purposes of such advertisement the applicant may at the appropriate time, supply or be required to supply a printing block (or more than one, if necessary) of the trade mark satisfactory to the Registrar, of such dimensions as may from time to time be approved or directed by the Registrar, or shall supply such information or other means of advertising the trade mark as may be required by the Registrar, if dissatisfied with the printing block supplied by the applicant or his agent, may require a fresh block before proceeding with the advertisement.
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43. |
Representations or information from applicant
For the purpose of advertising a trade mark, the Registrar may, at the appropriate time, require the applicant to supply—
(a) |
up to ten printed representations of the trade mark satisfactory to the Registrar; or
|
(b) |
such other information or means of advertising the trade mark as the Registrar requires.
|
|
44. |
Advertisement of series
When an application relates to a series of trade marks differing from one another in respect of the particulars mentioned in section 24 (2), the applicant may be required to supply a printing block (or more than one if necessary) satisfactory to the Registrar of any or of each of the trade marks constituting the series; or the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in which the several trade marks differ from one another.
|
44. |
Advertising of series of trade marks
The following shall apply if the application relates to a series of trade marks differing from one another in respect of the particulars mentioned in section 24(3) of the Act—
(a) |
rule 43 shall apply with respect to each of the trade marks in the series; and
|
(b) |
the Registrar may, instead of advertising a representation of each of the trade marks in the series, include with the advertisement a statement describing how the trade marks differ from each other.
|
|
45. |
Advertisements under sections 21 (10) and sections 38 (2)
and 38 (4)
Advertisements under sections 21 (10), 38 (2) and 38 (4) shall mutatis mutandis be made in the same manner as advertisements relating to an application for registration.
|
45. |
Advertisements under sections 21 (10) and 38 (2) and (4)
of the Act
Advertisements under sections 21 (10) and section 38 (2) and (4) of the Act shall be made in the same manner as advertisements of applications for registration and rules 42 to 44 and rule 45A shall apply with necessary modifications.
|
45A. |
Reimbursement for advertisements
The expenses, costs and charges incurred by or on behalf of the Registrar in effecting any advertisement in connexion with applications shall be repaid to the Registrar by the applicant concerned, and the Registrar may refuse to complete any registration until he has received such repayment.
|
45A. |
Costs of advertisement
Before an advertisement relating to an application is published, the applicant shall pay the costs of the advertisement.
Opposition to Registration
|
46. |
Opposition
Any person may within sixty days from the date of any advertisement in the Gazette of an application for registration of a trade mark give notice on Form TM 6 to the Registrar of opposition to the registration.
|
46. |
Opposition
Any person may, within sixty days from the date of any advertisement in the Journal or Kenya Gazette of an application for registration of a trade mark, give notice in Form TM 6 to the Registrar of opposition to the registration.
|
47. |
Notice of opposition
The notice shall include a statement of the grounds upon which the opponent objects to the registration. If registration is opposed on the ground that the mark resembles marks already on the register, the numbers of such trade marks and the numbers of the Gazettes in which they have been advertised shall be set out. The notice shall be accompanied by a duplicate which the Registrar will forthwith send to the applicant.
|
47. |
Notice of opposition
(1) |
The notice shall include a statement of the grounds upon which the opponent objects to the registration.
|
(2) |
If the registration is opposed on the ground that the mark resembles marks already on the register, the notice shall set out—
(a) |
the numbers of those other marks; and
|
(b) |
references to the Journals or Kenya Gazettes in which those other marks were advertised.
|
|
(3) |
The notice shall be accompanied by a duplicate, which the Registrar shall forthwith send to the applicant.
|
|
48. |
Counter-statement
Within forty-two days from the receipt of such duplicate the applicant shall send to the Registrar a counter-statement on Form TM 7 setting out the grounds on which he relies as supporting his application. The applicant shall also set out what facts, if any, alleged in the notice of opposition he admits. The counter-statement shall be accompanied by a duplicate.
|
48. |
Counter-statement
(1) |
Within forty-two days from the receipt of the duplicate the applicant shall send to the Registrar a counter-statement in Form TM 7 setting out the grounds on which he relies as supporting his application.
|
(2) |
The applicant shall also set out what facts, if any, alleged in the notice of opposition he admits.
|
(3) |
The counter-statement shall be accompanied by a duplicate.
|
(4) |
Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent.
|
|
49. |
Evidence in support of opposition
Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent and within forty-two days from the receipt of the duplicate the opponent shall leave with the Registrar such evidence by way of statutory declaration as he may desire to adduce in support of his opposition and shall deliver to the applicant copies thereof.
|
49. |
Evidence in support of opposition
(1) |
Within forty-two days after the receipt of the duplicate counter-statement, the opponent shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his opposition.
|
(2) |
The statutory declaration shall be in duplicate.
|
(3) |
Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.
|
|
50. |
Evidence in support of application
If an opponent leaves no evidence, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition but, if he does leave evidence, then, within forty-two days from the receipt of the copies of declarations, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application and shall deliver to the opponent copies thereof.
|
50. |
Evidence in support of application
(1) |
Within forty-two days after the receipt of the statutory declaration of the opponent under rule 49, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application.
|
(2) |
The statutory declaration shall be in duplicate.
|
(3) |
Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the opponent.
|
|
51. |
Evidence in reply by opponent
Within one month from the receipt by the opponent of the copies of the applicant's declarations the opponent may leave with the Registrar evidence by statutory declaration in reply, and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.
|
51. |
Evidence in reply by opponent
(1) |
Within thirty days after the receipt of the statutory declaration of the applicant under rule 50, the opponent may leave with the Registrar evidence, by way of statutory declaration, confined strictly to matters in reply.
|
(2) |
The statutory declaration shall be in duplicate.
|
(3) |
Upon receipt of the statutory declaration and duplicate the Registrar shall forthwith send the duplicate to the applicant.
|
|
52. |
Further evidence
No further evidence shall be left on either side, but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.
|
52A. |
Abandonment of application or opposition
If the applicant or opponent fails to furnish the required counter-statement or evidence in support within the times prescribed by rules 48 to 52 of these Rules, the application or opposition, as the case may be, shall be deemed to be abandoned and the Registrar may proceed to make an award of costs.
|
52A. |
Abandonment of application or opposition
If the applicant or opponent fails to furnish the required counter-statement or evidence in support within the times prescribed by rules 48 to 50, the application or opposition, as the case may be, shall be deemed to be abandoned and the Registrar may proceed to make an award of costs.
|
53. |
Exhibits
(1) |
Where there are exhibits to declarations filed in an opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the originals shall be left with the Registrar in order that they may be open to inspection.
|
(2) |
The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
|
|
54. |
Hearing
(1) |
Upon completion of the evidence, the Registrar shall give notice to the parties of a date when he will hear the arguments in the case.
|
(2) |
An appointment shall be for a date at least fourteen days after the date of the notice, unless the parties consent to a shorter notice.
|
(3) |
Within seven days from the receipt of the notice any party who intends to appear shall so notify the Registrar in Form TM 8.
|
(4) |
A party who receives notice and who does not, within seven days from the receipt thereof, so notify the Registrar in Form TM 8, may be treated as not desiring to be heard and the Registrar may act accordingly.
|
|
55. |
Extension of time
Where in opposition proceedings any extension of time is granted to any party, the Registrar may thereafter, if he thinks fit, without giving the said party a hearing, grant any reasonable extension of time to any other party in which to take any subsequent steps.
|
55. |
Deleted by L.N. 146/2003, r. 24.
|
56. |
Security for costs
Where a party giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice neither resides nor carries on business in Kenya, the Registrar may require him to give security, in such form as the Registrar may deem sufficient, for the costs of the proceedings before the Registrar, for such amount as to the Registrar may seem fit, and at any stage in the opposition proceedings may require further security to be given at any time before his decision in the case.
|
57. |
Costs in uncontested case
In the event of an opposition being uncontested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.
|
58. |
Opposition to application under section 40
Within sixty days from the date of any advertisement in the Gazette of an application for the registration of a certification trade mark any person may give notice to the Registrar on Form TM 36 of opposition under subparagraph (1) of paragraph 2 of the First Schedule to the Act; rules 47-57 shall apply mutatis mutandis to the proceedings thereon with substitution of Form TM 37 for Form TM 7 and Form TM 38 for TM 8. In any case of doubt any party may apply to the Registrar for direction.
|
58. |
Deleted by L.N. 146/2003, r. 25.
Non-Completion
|
59. |
Non-completion of registration
(1) |
Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar shall in Form TM 9A give notice in writing to the applicant at his trade or business address of the non-completion, but if the applicant has authorized an agent for the purpose of the application he shall instead send the notice to the agent and shall send a duplicate thereof to the applicant.
|
(2) |
If after fourteen days from the date when the notice was sent, or such further time as the Registrar may allow, the registration is not completed, the application shall be deemed to be abandoned.
Entry in the Register, and Associated Marks
|
|
60. |
Entry in register
(1) |
As soon as may be after the expiration of sixty days from the date of the advertisement in the Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of section 22 (1), and upon payment of the prescribed fee on Form TM 9, enter the trade mark in the register. The entry of a trade mark in a register shall give the date of registration, the goods in respect of which it is registered together with the particulars of the trade, business, profession, occupation or other description of the proprietor, particulars of any undertakings of the proprietor entered on the form of application, particulars affecting the scope of the registration or the rights conferred by the registration, and such other particulars as are prescribed.
|
(2) |
In the case of an application as aforesaid which the Registrar accepts only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant for registration, the aforesaid entry in the register shall state that it is “By Consent” and shall give the number of the previous registration or the application for registration.
|
|
60. |
Entry in register
(1) |
As soon as may be after the expiration of sixty days from the date of the advertisement in the Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of section 22 (1), and upon payment of the prescribed fee on Form TM 9, enter the trade mark in the register. The entry of a trade mark in a register shall give the date of registration, the goods or services in respect of which it is registered together with the particulars of the trade, business, profession, occupation or other description of the proprietor, particulars of any undertakings of the proprietor entered on the form of application, particulars affecting the scope of the registration or the rights conferred by the registration, and such other particulars as are prescribed.
|
(2) |
In the case of an application as aforesaid which the Registrar accepts only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant for registration, the aforesaid entry in the register shall state that it is “By Consent” and shall give the number of the previous registration or the application for registration.
|
|
60. |
Entry in register
(1) |
As soon as may be after the expiration of sixty days from the date of the advertisement in the Journal or Kenya Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of subsection (1) of section 22 of the Act, and upon payment of the prescribed fee, enter the trade mark in the register.
|
(2) |
The entry of a trade mark in a register shall give the date of registration, the goods or services in respect of which it is registered together with the particulars of the trade, business, profession, occupation or other description
of the proprietor, particulars of any undertakings of the proprietor
entered on the form of application, particulars affecting the scope
of the registration or the rights conferred by the registration, and
such other particulars as are prescribed.
|
(3) |
In the case of an application which the Registrar accepts only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant for registration, the entry in the register shall state that it is “By Consent” and shall give the number of the previous registration or the application for registration.
|
|
61. |
Associated marks
Where a mark is registered as associated with any other mark or marks the Registrar shall note in the register in connection with the first-mentioned mark the numbers of the marks with which it is associated and shall also note in the register in connection with each of the associated marks the number of the first-mentioned mark as being a mark associated therewith.
An application by a registered proprietor under section 26 (5) to the Registrar to dissolve the association between two or more associated trade marks shall be made on Form TM 18 and shall include a statement of the grounds of the application.
|
61. |
Notations indicating association no longer of any effect
A notation in the register included as a result of a trade mark having been associated with another trade mark under section 26 of the Act before that section was repealed is of no effect.
|
62. |
Death of applicant before registration
In case of the death of any applicant for the registration of a trade mark after the date of his application and before the trade mark applied for has been entered in the register, the Registrar, after the expiration of the prescribed period of advertisement and the determination of any opposition to the application, may, on being satisfied of the applicant’s death, enter in the register, in place of the name of the deceased applicant, the name, address and description of the person owning the trade mark, on ownership being proved to the satisfaction of the Registrar.
|
63. |
Certificate of registration
Upon the registration of a trade mark the Registrar shall issue to the applicant a certificate in the Form TM 10A, and shall affix thereto a copy of the mark, which may be a representation thereof supplied by the applicant under rule 23.
|
63. |
Certificate of registration
Upon the registration of a trade mark the Registrar shall issue to the applicant a certificate in Form TM 10A, and shall affix thereto a copy of the mark.
Renewal
|
64. |
Renewal of registration
At any time not more than three months before the expiration of the last registration of a trade mark any person may leave at the office a fee for the renewal of the registration of the mark upon Form TM 10, and, if he is not the registered proprietor, shall sign a statement on the form that he is directed by the registered proprietor to pay the fee (if such be the case) and shall give his address. Before taking any further step the Registrar may either (a) require the person leaving the fee to furnish within ten days an authority to pay the fee signed by the registered proprietor, and if he does not furnish such authority may return the fee and treat it as not received, or (b) communicate with the registered proprietor stating that the fee has been received and that the registration will in due course be renewed.
|
64. |
Renewal of registration
(1) |
At any time not more than ninety days before the expiration of the last registration of a trade mark, any person may leave at the office a fee for the renewal of the registration of the mark in Form TM 10, and, if he is not the registered proprietor, shall sign a statement on the form that he is directed by the registered proprietor to pay the fee (if such be the case) and shall give his address.
|
(2) |
Before taking any further step, the Registrar may either—
(a) |
require the person leaving the fee to furnish within ten days an authority to pay the fee signed by the registered proprietor, and if he does not furnish that authority may return the fee and treat it as not received; or
|
(b) |
communicate with the registered proprietor stating that the fee has been received and that the registration will in due course be renewed.
|
|
|
65. |
Notice before removal of trade mark from register
At a date not less than one month and not more than two months before the expiration of the last registration of a mark, if no fee upon Form TM 10 has been received, the Registrar shall notify the registered proprietor in writing of the approaching expiration.
|
65. |
Notice before removal of trade mark from register
At a date not less than thirty days and not more than sixty days before the expiration of the last registration of a mark, if no fee in Form TM 10 has been received, the Registrar shall notify the registered proprietor in writing of the approaching expiration.
|
66. |
Second notice
At a time not less than fourteen days and not more than one month before the expiration of the last registration of a mark the Registrar may, if no fee as aforesaid has been received, send a notice in writing to the registered proprietor at his trade or business address as well as at his address for service, if any.
|
66. |
Second notice
At a time not less than fourteen days and not more than thirty days before the expiration of the last registration of a mark, the Registrar may, if no renewal fee has been received, send a notice in writing to the registered proprietor at his trade or business address as well as at his address for service, if any.
|
67. |
Advertisement of non-payment
If at the date of the expiration of the last registration of a mark the renewal fee has not been paid, the Registrar shall advertise the fact forthwith in the Gazette, and if within one month of that advertisement the renewal fee upon Form TM 10, together with an additional fee upon Form TM 11, is received, he may renew the registration without removing the mark from the register.
|
67. |
Advertisement of non-payment
If at the date of the expiration of the last registration of a mark the renewal fee has not been paid, the Registrar shall advertise the fact forthwith in the Journal or Kenya Gazette, and, if within one month after that advertisement the renewal fee in Form TM 10, together with the additional prescribed late renewal fee, is received, he may renew the registration without removing the mark from the register.
|
68. |
Removal of trade mark from register
Where, at the expiration of one month from the advertisement mentioned in the last foregoing rule, the fees therein mentioned have not been paid, the Registrar may remove the mark from the register as of the date of the expiration of the last registration, but may, upon payment of the renewal fee upon Form TM 10 together with a restoration fee upon Form TM 12, restore the mark to the register if satisfied that it is just so to do, and upon such conditions as he may think fit to impose.
|
68. |
Removal of trade mark from register
If, at the expiration of thirty days after the advertisement under rule 67, the fees referred to in that rule have not been paid, the Registrar may remove the mark from the register as of the date of the expiration of the last registration, but he may, upon payment of the renewal fee in Form TM 10 together with the additional prescribed restoration fee, restore the mark to the register if satisfied that it is just to do so, and upon such conditions as he may think fit to impose.
|
69. |
Record of removal of mark
Where a trade mark has been removed from the register, the Registrar shall cause to be entered in the register a record of the removal and of the cause thereof.
|
70. |
Notice and advertisement of renewal and restoration
Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Gazette.
|
70. |
Notice and advertisement of renewal and restoration
Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Journal or Kenya Gazette.
Assignments and Transmissions
|
71. |
Joint application for entry of assignment or transmission
Where a person becomes entitled by assignment or transmission to a registered trade mark he may, conjointly with the registered proprietor, make application to the Registrar on Form TM 14 to register his title.
|
71. |
Application for entry of assignment or transmission
A person who becomes entitled by assignment or transmission to a registered trade mark may apply, in Form TM 14, to the Registrar to register his title.
|
72. |
Application for entry of assignment or transmission by subsequent proprietor
Where a person becomes entitled to a registered trade mark in the manner referred to in rule 71, and no conjoint application as therein mentioned is made, he shall make application to the Registrar on Form TM 15 to register his title.
|
72. |
Deleted by L.N. 146/2003, r. 34.
|
73. |
Particulars to be stated in application
An application under rule 71 or rule 72 shall contain the name, trade or business address and description of the person claiming to be entitled, together with full particulars of the instrument, if any, under which he claims, and such instrument shall be produced for inspection by the Registrar, preferably at the time of application. The full names of all the partners in a partnership shall be given in the body of the application. The Registrar may in any case require and retain an attested copy of any instrument produced for inspection in proof of title, but such copy shall not be open to public inspection.
|
73. |
Particulars to be stated in application
(1) |
An application under rule 71 shall contain the name, trade or business address and description of the person claiming to be entitled and shall be accompanied by a copy of the instrument, if any, under which the person claims.
|
(2) |
The full names of all the partners in a partnership shall be given in the body of the application.
|
(3) |
The Registrar may in any case require and retain an attested copy of any instrument produced for inspection in proof of title, but that copy shall not be open to public inspection.
|
|
74. |
Case accompanying application
Where in the case of an application on Form TM 14 or Form TM 15 the person applying for registration of his title does not claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him. If the Registrar so require, the case shall be verified by a statutory declaration on Form TM 16.
|
74. |
Case accompanying application
If the person applying for registration of his title does not claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him; and if the Registrar so requires, the case shall be verified by a statutory declaration.
|
75. |
Proof of title
The Registrar may call on any person who applies to be registered as proprietor of a registered trade mark for such proof or additional proof of title as he may require for his satisfaction.
|
76. |
Application for entry of assignment without goodwill
(1) |
An application under rule 71 or rule 72 relating to an assignment on or after the appointed day, of a trade mark in respect of any goods shall state—
(a) |
whether the trade mark was, at the time of the assignment, used in a business in any of those goods; and
|
(b) |
whether the assignment was made otherwise than in connection with the goodwill of that business,
|
and, if both those circumstances subsisted, then the applicant shall leave with the Registrar a copy of the Registrar's directions to advertise the assignment, obtained upon application under section 25 (7) and rule 80, and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled; and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.
|
(2) |
For the purposes of section 32 (4), the period within which a corporation may be registered as the subsequent proprietor of a registered trade mark, upon application made under rule 71 or rule 72, shall be six months from the date of advertisement in the Gazette of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow, on application being made to him on Form TM 13 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or. during the period for which the extension can be allowed.
|
|
76. |
Application for entry of assignment without goodwill
(1) |
An application under rule 71 or rule 72 relating to an assignment on or after the appointed day, of a trade mark in respect of any goods and services shall state—
(a) |
whether the trade mark was, at the time of the assignment, used in a business in any of those goods or services, as the case may be; and
|
(b) |
whether the assignment was made otherwise than in connection with the goodwill of that business,
|
and, if both those circumstances subsisted, then the applicant shall leave with the Registrar a copy of the Registrar's directions to advertise the assignment, obtained upon application under section 25 (7) and rule 80, and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled; and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.
|
(2) |
For the purposes of section 32 (4), the period within which a corporation may be registered as the subsequent proprietor of a registered trade mark, upon application made under rule 71 or rule 72, shall be six months from the date of advertisement in the Gazette of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow, on application being made to him on Form TM 13 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or. during the period for which the extension can be allowed.
|
|
76. |
Application for entry of assignment without goodwill
(1) |
An application under rule 71 relating to an assignment on or after the appointed day of a trade mark in respect of any goods or services shall state—
(a) |
whether the trade mark was, at the time of the assignment, used in a business in any of those goods or services, as the case may be; and
|
(b) |
whether the assignment was made otherwise than in connexion with the goodwill of that business,
|
|
and, if both those circumstances subsisted, the applicant shall leave with the Registrar a copy of the Registrar’s directions to advertise the assignment, obtained upon application under subsection (7) of section 25 of the Act and rule 80 of these Rules, and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled; and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.
(2) |
For the purposes of section 32(4) of the Act, the period within which a corporation may be registered as the subsequent proprietor shall be six months after the date of advertisement of the registration in the Journal or Kenya Gazette.
|
|
77. |
Entry in register
When the Registrar is satisfied as to the title of the person claiming to be registered, he shall cause him to be registered as proprietor of the trade mark in respect of the relevant goods and shall enter in the register his name, trade or business address and description and particulars of the assignment or transmission.
|
77. |
Entry in register
When the Registrar is satisfied as to the title of the person claiming to be registered, he shall cause him to be registered as proprietor of the trade mark in respect of the relevant goods or services, and shall enter in the register his name, trade or business address and description and particulars of the assignment or transmission.
|
78. |
Separate registrations
Where pursuant to an application under rule 71 or rule 72, and as the result of a division and separation of the goods of a registration or a division and separation of places or markets, different persons become registered separately under the same official number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.
|
78. |
Separate registrations
Where pursuant to an application under rule 71 or rule 72, and as the result of a division and separation of the goods or services of a registration or a division and separation of places or markets, different persons become registered separately under the same official number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.
|
78. |
Separate registrations
Where, pursuant to an application under rule 71, and as the result of a division and separation of the goods or services of a registration or a division and separation of places or markets, different persons become registered separately under the same official number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.
|
79. |
Registrar’s certificate of approval as to certain assignments
and transmissions
Any person who desires to obtain the Registrar's certificate under section 25 (5), or his notification of approval under section 25 (6), shall send to the Registrar, with his application on Form TM 39, or No. 40 or 29, as the case may be, a statement of case in duplicate setting out the circumstances, and a copy of any instrument or proposed instrument effecting the assignment or transmission. The Registrar may call for any evidence or further information that he may consider necessary, and the statement of case shall be amended if required to include all the relevant circumstances and shall if required be verified by a statutory declaration. The Registrar, after hearing if so required the applicant and any other person whom the Registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be. Where a statement of case is amended, two fair copies thereof in its final form shall be left with the Registrar. The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.
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79. |
Registrar’s certificate of approval as to certain assignments
and transmissions
(1) |
Any person who desires to obtain the Registrar’s certificate under subsection (5), or his notification of approval under subsection (6), of section 25 of the Act shall send to the Registrar, with his application in Form TM 39 or 40, as the case may be, a statement of case in duplicate setting out the circumstances, and a copy of any instrument or proposed instrument effecting the assignment or transmission.
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(2) |
The Registrar may call for any evidence or further information that he may consider necessary, and the statement of case shall be amended if required to include all the relevant circumstances, and shall if required be verified by a statutory declaration.
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(3) |
The Registrar, after hearing if so required the applicant and any other person whom the Registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be.
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(4) |
Where a statement of case is amended, two fair copies thereof in its final form shall be left with the Registrar.
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(5) |
The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.
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|
80. |
Registrar’s directions for advertisement of assignment without
goodwill of trade mark in use
(1) |
An application to the Registrar under section 25 (7) shall be made by the assignee on Form TM 41 and shall state the date on which the assignment was made. The application shall give particulars of the registration in the case of a registered trade mark, and, in the case of an unregistered trade mark, shall show the mark and give particulars of the registered trade mark that has been assigned therewith in accordance with section 25 (3). The Registrar may call for any evidence or further information, and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.
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(2) |
The Registrar may refuse to consider such an application in a case to which section 25 (6) applies unless his approval has been obtained under the said subsection and a reference identifying the Registrar’s notification of approval is included in the application.
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(3) |
A request to the Registrar for an extension of the period within which the application may be made, which shall be on Form TM 42, may be made at any time before or during the period for which extension can be allowed. The extension of the period which the Registrar may allow shall not exceed three months.
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|
80. |
Registrar’s directions for advertisement of assignment without
goodwill of trade mark in use
(1) |
An application to the Registrar under subsection (7) of section 25 of the Act shall be made by the assignee in Form TM 41, and shall state the date on which the assignment was made.
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(2) |
The application shall give particulars of the registration in the case of a registered trade mark, and, in the case of an unregistered trade mark, shall show the mark and give particulars of the registered trade mark that has been assigned therewith in accordance with subsection (3) of section 25.
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(3) |
The Registrar may call for any evidence or further information, and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.
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(4) |
The Registrar may refuse to consider such an application in a case to which subsection (6) of section 25 applies unless his approval has been obtained under the said subsection and a reference identifying the Registrar’s notification of approval is included in the application.
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(5) |
Deleted by L.N. 146/2003, r. 40.
Alteration of Address
|
|
81. |
Alteration of address in register
(1) |
A registered proprietor or registered user of a trade mark whose trade or business address is changed so that the entry in the register is rendered incorrect shall forthwith request the Registrar in Form TM 17 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.
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(2) |
A registered proprietor or registered user of a trade mark whose address for service in Kenya entered in the register is changed, whether by discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect, shall forthwith request the Registrar in Form TM 32 to
make the appropriate alteration of the address in the register, and
the Registrar shall alter the register accordingly if he is satisfied
in the matter.
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(3) |
A registered proprietor or registered user of a trade mark whose registered trade or business address or address for service is altered by a public authority, so that the changed address designates the same premises as before, may make the request to the Registrar, but in that case no fee shall be payable, and if he does so he shall leave therewith a certificate of the alteration given by the authority; and if the Registrar is satisfied as to the facts of the case he shall alter the register accordingly.
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(4) |
In the case of the alteration of the address of person entered in the register as the address for service of more than one registered proprietor or registered user of trade marks, the register may, on proof that the address is the address of the applicant and if satisfied that it is just to do so, accept an application from that person in Form TM 32 amended so as to suit the case for the appropriate alteration of the entries of his address as the address for service in the several registrations, particulars of which shall be given in the form, and may alter the entries accordingly.
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(5) |
All applications under this rule in Form TM 32 shall be signed by the registered proprietor or the registered user, as the case may be, or by an agent, expressly authorized by him for the purpose of such an application, unless in exceptional circumstances the Registrar otherwise allows.
Applications to the Registrar for Rectification (Sections 29, 30, 35 and 36)
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|
82. |
Application to rectify or remove a trade mark from the register
An application to the Registrar under any of the sections 29, 30, 35 or 36 for the making, expunging or varying of any entry in the register shall be made on Form TM 25 and shall be accompanied by a statement setting out fully the nature of the applicant's interest, the facts upon which he bases his case and the relief which he seeks. Where the application is made by a person who is not the registered proprietor of the trade mark in question it shall be accompanied by a copy of the application and a copy of the statement, and these copies will be transmitted forthwith by the Registrar to the registered proprietor.
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82. |
Application to rectify or remove a trade mark from the register
(1) |
An application to the Registrar under any of the sections 29, 30, 35 and 36 of the Act for the making, expunging or varying of any entry in the register shall be made in Form TM 25 and shall be accompanied by a statement setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks.
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(2) |
The application shall be accompanied by a copy of the application and a copy of the statement and the Registrar shall forthwith transmit the copies to the registered proprietor.
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|
83. |
Further procedure
Upon such application being made, and copy thereof transmitted to the registered proprietor, if necessary, the provisions of rules 48 to 57 shall apply mutatis mutandis to the further proceedings thereon; but the Registrar shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement. In any case of doubt any party may apply to the Registrar for directions.
|
83. |
Further procedure
Rules 48 to 57 shall apply with respect to the further proceedings relating to an application in Form TM 25, with necessary modifications and with the following specific modifications—
(a) |
references to the applicant shall be deemed to be references to the registered proprietor and references to the opponent shall be deemed to be references to the person making the application under rule 25;
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(b) |
the Registrar shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement.
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|
84. |
Intervention by third parties
(1) |
Any person other than the registered proprietor alleging interest in a registered trade mark in respect of which an application is made in Form TM 25, may apply to the Registrar in Form TM 26 for leave to intervene, stating thereon the nature of his interest, and the Registrar may refuse or grant leave, after hearing (if so required) the parties concerned, upon such conditions and terms as he may deem fit.
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(2) |
Before dealing in any way with the application for leave to intervene the Registrar may require the applicant to give an undertaking to pay such costs as in the circumstances he may award to any party.
Surrender of a Registered Trade Mark
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|
84A. |
Application to surrender
(1) |
An application to surrender a registered trade mark under section 36A(1) of the Act shall be made to the Registrar—
(a) |
in Form TM 21, if the surrender is for all of the goods or services in respect of which the trade mark is registered; or
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(b) |
in Form TM 22, if the surrender is for some of the goods or services in respect of which the trade mark is registered.
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|
(2) |
An application under paragraph (1) shall—
(a) |
set out the name and address of each person who has a registered interest in the trade mark; and
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(b) |
include a certification by the proprietor that each person referred to in subparagraph (a) either—
(i) |
has been given notice of the proposed surrender at least ninety days before the application is made; or |
(ii) |
is not affected by the surrender or has consented to it. |
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|
(3) |
After making the appropriate entries in the register, the Registrar shall publish a notice of the surrender in the Journal or Kenya Gazette.
Applications for Alteration of the Register by Correction, Change, Cancellation or Striking out Goods or for Entry of Disclaimer, Memorandum or Note (Section 37(1))
|
|
85. |
An application to the Registrar under section 37 (1) for the alteration of the register by correction, change, cancellation, or striking out goods, or for the entry of a disclaimer or memorandum, may be made by the registered proprietor of the trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of the registered proprietor. Such applications shall be made on Form TM 17, TM 19, TM 20, TM 21, TM 22, TM 23 or TM 32, as may be appropriate; but an application on Form TM 21 or TM 22 or TM 32 shall be signed by the registered proprietor or other person entitled under this rule unless in exceptional circumstances the Registrar otherwise allows, or, in the case of Form TM 32 only, it is signed by an agent expressly authorised for the purpose of such an application.
|
85. |
An application to the Registrar under section 37 (1) for the alteration of the register by correction, change, cancellation, or striking out and goods or services or classes of goods or services, or for the entry of a disclaimer or memorandum, may be made by the registered proprietor of the trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of the registered proprietor. Such applications shall be made on Form TM 17, TM 19, TM 20, TM 21, TM 22, TM 23 or TM 32, as may be appropriate; but an application on Form TM 21 or TM 22 or TM 32 shall be signed by the registered proprietor or other person entitled under this rule unless in exceptional circumstances the Registrar otherwise allows, or, in the case of Form TM 32 only, it is signed by an agent expressly authorised for the purpose of such an application.
|
85. |
Application under section 37(1)
(1) |
An application to the Registrar under subsection (1) of section 37 of the Act for the alteration of the register by correction or change, or for the entry of a disclaimer or memorandum, may be made by the registered proprietor of the trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of the registered proprietor.
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(2) |
An application under paragraphs (a), (b) or (e) of section 37(1) of the Act shall be in Form TM 17, TM 19, TM 20, TM 23 or TM 32, as may be appropriate.
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(3) |
An application under paragraph (c) or (d) of section 37(1) of the Act shall be made in accordance with rule 84A.
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(4) |
For greater certainty, Form TM 20 may be used to change the name of the registered proprietor if the registered proprietor merges with another corporation and the corporation resulting from the merger has a different name.
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|
86. |
Evidence
In the case of an application as in rule 85, the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.
|
87. |
Advertisement of certain applications
Where application is made on Form TM 23 to enter a disclaimer or memorandum relating to a trade mark, the Registrar, before deciding upon such application, shall advertise the application in the Gazette in order to enable any person desiring so to do to state, within one month of the advertisement, any reasons in writing against the making of the entry of the disclaimer or memorandum.
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87. |
Advertisement of certain applications
Where application is made in Form TM 23 to enter a disclaimer or memorandum relating to a trade mark, the Registrar, before deciding upon such application, shall advertise the application in the Journal or Kenya Gazette in order to enable any person desiring so to do to state, within thirty days of the advertisement, any reasons in writing against the making of the entry of the disclaimer or memorandum.
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88. |
Certificates of validity to be noted
Where the Court has certified as provided in section 47 with regard to the validity of a registered trade mark, the registered proprietor thereof may request the Registrar on Form TM 47 to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, which shall be named in the form. An office copy of the certificate shall be sent with the request, and the Registrar shall so note the register and publish the note in the Gazette.
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88. |
Certificates of validity to be noted
Where the court has certified under section 47 of the Act with regard to the validity of a registered trade mark, the registered proprietor thereof may request the Registrar in Form TM 47 to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, which shall be named in the form; an office copy of the certificate shall be sent with the request, and the Registrar shall so note the register and publish the note in the Journal or Kenya Gazette.
Applications to Alter Registered Trade Marks
|
89. |
Alteration of registered mark
Where a person desires to apply under section 38 that his registered of registered trade mark may be added to or altered, he shall make his application in writing on Form TM 24, and shall furnish the Registrar with four copies of the mark as it will appear when so added to or altered.
|
89. |
Alteration of registered mark
Where a person desires to apply under section 38 of the Act that his registered trade mark may be added to or altered, he shall make his application in writing in Form TM 24.
|
90. |
Advertisement before decision
The Registrar shall consider the application and shall, if it appears to him expedient, advertise the application in the Gazette before deciding it. Within one month from the date of such advertisement any person may give notice of opposition to the application, on Form TM 45 accompanied by a duplicate of the notice, and may also send therewith a further statement of his objections in duplicate. The Registrar shall send the duplicate notice, and the duplicate of any further statement of objections, to the applicant, and the provisions of rules 48 to 57 shall apply mutatis mutandis to the further proceedings thereon. In any case of doubt any party may apply to the Registrar for directions.
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90. |
Advertisement before decision
(1) |
The Registrar shall consider the application and shall, if it appears to him to be expedient, advertise the application in accordance with rule 45 and rules 43, 44 and 45A shall apply with necessary modifications.
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(2) |
Any person may, within thirty days after the date of the advertisement of the application, give notice in Form TM 6 to the Registrar of opposition to the application and rules 47 to 57 shall apply with necessary modifications.
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(3) |
The Registrar shall send the duplicate notice, and the duplicate of any further statement of objections, to the applicant, and the provisions of rules 48 to 57 shall apply mutatis mutandis to the further proceedings thereon; and in any case of doubt any party may apply to the Registrar for directions.
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|
91. |
Decision advertisement notification
If the Registrar decides to allow the application he shall add to or alter the mark in the register, and if the mark so added to or altered has not been advertised under the last foregoing rule, he shall advertise it in the Gazette and in any case shall insert in the Gazette a notification that the mark has been altered.
|
91. |
Decision of Registrar
If the Registrar decides to allow the application he shall add to or alter the mark in the register, and if the mark so added to or altered has not been advertised under rule 90 he shall advertise it in the Journal or Kenya Gazette, and in any case shall insert in the Journal or Kenya Gazette a notification that the mark has been altered.
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92. |
Advertisement illustration
In connection with an application to alter a registered trade mark the Registrar may at any time call on the applicant to supply a printing block satisfactory to the Registrar and suitable for advertising the mark with the addition or alteration as aforesaid, if in the opinion of the Registrar an advertisement describing the addition or alteration in words would not be likely to be understood by persons interested in the matter.
|
92. |
Advertisement
If the Registrar is of the opinion that an advertisement describing the addition or alteration to the trade mark would not likely be understood by persons interested in the matter, the Registrar may make a requirement under rule 43.
Court Orders for Rectification of Certification Trade Mark Entries and Regulations
|
93. |
Rectification of certification trade mark entries by the court
An application on any of the grounds mentioned in paragraph 4 of the First Schedule to the Act, made by an aggrieved person to the court for an order expunging or varying an entry in the register of or relating to a certification trade mark, or varying the relevant deposited regulations, shall be made in Form TM 35 and shall include full particulars of the grounds on which the application is made.
Alteration of Certification Trade Mark Regulations
|
94. |
Alteration of regulations
An application by the registered proprietor of a certification trade mark for an alteration of the deposited Regulations shall be made on Form TM 34. Where the Registrar causes such an application to be advertised the time within which any person may give notice to the Registrar of opposition to the application shall be one month from the date of the advertisement.
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94. |
Alteration of regulations
(1) |
An application by the registered proprietor of a certification trade mark for an alteration of the deposited regulations shall be made in Form TM 34.
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(2) |
Where the Registrar causes such an application to be advertised, the time within which any person may give notice to the Registrar of opposition to the application shall be thirty days from the date of the advertisement.
Collective Trade Marks
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|
94A. |
Application for registration
(1) |
An application to the Registrar for registration of a collective trade mark under section 40A (1) of the Act shall be in Form TM 2.
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(2) |
These Rules shall apply, with necessary modifications, to an application for registration of a collective trade mark as they apply to an application for an ordinary trade mark.
Registered Users
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|
101. |
Registered user’s application to correct error or enter change
(1) |
Applications under subsection (2) of section 37 of the Act shall be made in Form TM 17, TM 19, TM 20 or TM 32, as may be appropriate, by a registered user of a trade mark, or by such person as may satisfy the Registrar that he is entitled to act in the name of a registered user; and the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.
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(1A) |
For greater certainty, Form TM 20 may be used to apply to change the name of a registered user if the registered user merges with another corporation and the corporation resulting from the merger has a different name.
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(2) |
In case of the registration of a registered user for a period, in accordance with paragraph (d) of subsection (4) of section 31 of the Act, the Registrar shall cancel the entry of the registered user at the end of the period.
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(3) |
Where some or all of the goods or services are struck out from those in respect of which a trade ark is registered, the Registrar shall at the same time strike them out from those specifications of registered users of the trade mark in which they are comprised.
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(4) |
The Registrar shall notify every cancellation or striking out under this rule to the registered users whose permitted use is affected thereby and the registered proprietor of the trade mark.
Extension of Time
|
|
102. |
Extension of Time
If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of the time for doing any act or taking any proceeding under these Rules, not being a time expressly provided in the Act or prescribed by rule 76 or rule 80, he may extend the time upon such notice to other parties, and proceedings thereon, and upon such terms as he may direct, and the extension may be granted though the time has expired for doing the act or taking the proceeding.
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102. |
Extension of time
(1) |
The Registrar may extend, on such conditions as he may specify, the time for doing any act or taking any proceedings under these Rules.
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(2) |
The Registrar may not extend a time expressly provided in the Act, other than the period prescribed under subsection (6) or (7) of section 25 of the Act.
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(3) |
A time limit may not be extended for a period exceeding ninety days, except for a time period prescribed by rule 76 which may be extended for a period not exceeding six months.
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(4) |
An application to the Registrar for an extension of time under paragraph (1) shall be in Form TM 53 and shall be filed with the Registrar.
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(5) |
The application shall state the grounds on which the application is based.
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(6) |
An application for an extension of time may be made even though the time has already expired.
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(7) |
The application shall be dealt with upon such notice, and in accordance with such procedures, as the Registrar may direct.
Discretionary Power
|
|
103. |
Hearing
Before exercising adversely to any person any discretionary power given to the Registrar by the Act or these Rules, the Registrar shall, if so required, hear that person thereon.
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104. |
Application for hearing
An application for a hearing shall be made within one month from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power.
|
104. |
Application for hearing
An application for a hearing shall be made within thirty days from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power.
|
105. |
Notice of hearing
(1) |
Upon receiving such application, the Registrar shall give the person applying fourteen days’ notice of a time when he may be heard.
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(2) |
Within seven days from the date when the notice would be delivered in the ordinary course of post, the person applying shall notify the Registrar whether or not he intends to be heard on the matter, and if he intends to appear he shall file Form TM 8 and pay the prescribed fee thereon.
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|
106. |
Notification of decision
The decision of the Registrar in the exercise of any such discretionary power shall be notified to the person affected.
Power to Dispense with Evidence
|
107. |
Dispensing with evidence
Where under these Rules a person is required to do any act or thing, or to sign any document, or to make any declaration on behalf of himself or of any body corporate, or any document or evidence is required to be produced to or left with the Registrar, or at the office, and it is shown to the satisfaction of the Registrar that from any reasonable cause that person is unable to do the act or thing, or to sign the document, or to make the declaration, or that the document or evidence cannot be produced or left, the Registrar may, upon the production of such other evidence, and subject to such terms as he may think fit, dispense with any such act or thing, signature, declaration, document or evidence.
Amendments
|
108. |
Amendments of documents
Any document or drawing or other representation of a trade mark may be amended, and any irregularity in procedure which in the opinion of the Registrar may be excused without detriment to the interests of any person may be corrected, if the Registrar thinks fit, and on such terms as he may direct.
|
108. |
Amendments of documents
(1) |
Any document or drawing or other representation of a trade mark may be amended, and any irregularity in procedure which in the opinion of the Registrar may be excused without detriment to the interests of any person may be corrected, if the Registrar thinks fit, and on such terms as he may direct.
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(2) |
An application under paragraph (1) to amend a document or drawing or other representation shall be in Form TM 19.
Certificates
|
|
109. |
Certificates by Registrar
(1) |
The Registrar may give a certificate, other than a certificate under section 22 of the Act, as to any entry, matter or thing which he is authorized or required by the Act or these Rules to make or do, upon receipt of a request therefor in Form TM 30 from any person who, if the Registrar thinks fit so to require, can show an interest in the entry, matter or thing to his satisfaction.
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(2) |
Except in a case falling under rule 111, the Registrar shall not be obliged to include in the certificate a copy of any mark, unless he is furnished by the applicant with a copy thereof suitable for the purpose.
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|
110. |
Marks registered without limitation of colour
Where a mark is registered without limitation of colour, the Registrar may grant a certificate of its registration for the purpose of obtaining registration abroad either in the colour in which it appears upon the register or in any other colour or colours.
|
111. |
Certificates for use in obtaining registration abroad
(1) |
Where a certificate of registration of a trade mark is issued for use in obtaining registration abroad, the Registrar shall include in the certificate a copy of the mark, and may require the applicant for the certificate to furnish him with a copy of the mark suitable for the purpose, and if the applicant fails to do so may refuse to issue the certificate.
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(2) |
The Registrar may state in the certificate such particulars concerning the registration of the mark as to him seem fit, and may omit therefrom reference to any disclaimers appearing in the register; but in the last-mentioned case the certificate shall be marked “For use in obtaining registration abroad only”.
Declarations
|
|
112. |
Person before whom declaration is to be taken
The statutory declarations required by the Act and these Rules, or used in any proceedings thereunder, shall be made and subscribed as follows—
(a) |
if made in the Commonwealth, before any court, judge or justice of the peace, or any officer authorized by law to administer an oath for the purpose of a legal proceeding;
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(b) |
if made outside the Commonwealth, before a Kenya Consul or Vice-Consul, or other person exercising the functions of a Kenya Consul, or a notary public, or before a judge or magistrate.
|
|
113. |
Presumption as to seal of officer taking declaration
Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized by rule 112 to take a declaration in testimony that the declaration was made and subscribed before him may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.
Search
|
114. |
Searches
Any person may request the Registrar, on Form TM 27, to cause a search to be made in respect of specified goods classified in any one class of Schedule II or III, to ascertain whether any mark is on record at the date of the search which resembles a trade mark of which duplicate representations accompany the form. The Registrar shall cause such a search to be made and the person making the request to be informed of the result thereof.
|
114. |
Searches
Any person may request the Registrar, on Form TM 27, to cause a search to be made in respect of specified goods or services classified in any one class of Schedule II or III, to ascertain whether any mark is on record at the date of the search which resembles a trade mark of which duplicate representations accompany the form. The Registrar shall cause such a search to be made and the person making the request to be informed of the result thereof.
|
114. |
Searches
(1) |
Any person may request the Registrar to cause a search to be made in respect of specified goods and services to ascertain whether any mark is on record that resembles a trade mark provided by the person.
|
(1A) |
An application under paragraph (1) shall be in Form TM 27 and shall be accompanied by duplicate representations of the trade mark.
|
(2) |
The Registrar shall cause such a search to be made and the person making the request to be informed of the result thereof.
Copies
|
|
115. |
Textile goods
The classes to which paragraph 1 of the Second Schedule to the Act applies shall be classes 22 to 26 inclusive of Schedule III; but that paragraph shall apply only to goods in classes 22, 25 or 26 that are composed to a substantial extent of artificial or natural textile fibres or are complete articles of clothing.
|
115. |
Textile goods
The classes to which paragraph 1 of the Second Schedule to the Act applies shall be classes 22 to 26 inclusive of Part I of Schedule III; but that paragraph shall apply only to goods in classes 22, 25 or 26 that are composed to a substantial extent of artificial or natural textile fibres or are complete articles of clothing.
|
115. |
Copies of documents
A person who wishes to obtain a copy of a document kept by the Registrar shall use Form TM 54.
|
116. |
Metal goods
For the purposes of paragraph 2 of the Second Schedule to the Act, the classes which refer predominantly to metal goods shall be classes 6 to 14 (inclusive) and 21 of Schedule III.
|
116. |
Metal goods
For the purposes of paragraph 2 of the Second Schedule to the Act, the classes which refer predominantly to metal goods shall be classes 6 to 14 (inclusive) and 21 of Part I of Schedule III.
|
116. |
Deleted by L.N. 146/2003, s. 61.
Appeals to the court
|
117. |
Appeal to court
When a person intends to appeal to the court, the appeal shall be made by motion in the usual way, and no such appeal shall be entertained unless notice of motion is given within sixty days from the date of the decision appealed against or within such further time as the Registrar shall allow.
Applications to and Orders of the court
|
118. |
Applications to court
Every application to the court under the Act shall be served on the Registrar.
|
119. |
Order of court
(1) |
Where an order has been made by the court in any case under the Act, the person in whose favour the order has been made, or such one of them if more than one, as the Registrar may direct, shall forthwith leave at the office an office copy of the order, together with Form TM 46, duly completed, if required.
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(2) |
The register may, if necessary, thereupon be rectified or altered by the Registrar.
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120. |
Publication of order of court
Whenever an order is made by the court under the Act, the Registrar may, if he thinks that such order should be made public, publish it in theGazette.
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120. |
Publication of order of court
Whenever an order is made by the court under the Act, the Registrar may, if he thinks that the order should be made public, publish it in the Journal or Kenya Gazette.
Submission of Documents in Electronic Form
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121. |
Submission of electronic documents
A document submitted to the Registrar in electronic form shall be deemed to have been submitted in accordance with these Rules on the day the electronic form is submitted if, within thirty days after that submission, the document is submitted to the Registrar in paper form in accordance with these Rules together with any applicable fee required under these Rules.
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FIRST SCHEDULE [Rule 3, L.N. 454/1959, s. 5, L.N. 44/1970, s.
10, L.N. 138/1971, s. 2, L.N. 131/1975, s. 2, L.N. 249/1988, s. 2,
L.N. 50/1991, s. 2, L.N. 146/2003, r.. 64.]
FEES
Notes—
1. |
A foreign fee is payable if the person paying the fee or on whose behalf the fee is being paid does not reside in Kenya and does not have a principal place of business in Kenya.
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2. |
A series of trade marks under section 24(3) of the Act shall be deemed to be a single trade mark for the purpose of calculating fees, except where otherwise indicated.
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SECOND SCHEDULE
Deleted by L.N. 146/2003, r. 65.
THIRD SCHEDULE
Deleted by L.N. 146/2003, r. 65.
[L.N.
42/1995, S. 23.]
FOURTH SCHEDULE [Rule 4, L.N. 44/1970, s. 11, L.N. 146/2003, r.
66.]
APPLICATION OF SECTION 65
TO FOREIGN STATES UNDER SUBSECTION (4) OF THAT SECTION [L.N. 37/1967, L.N. 134/1975.]
TRADE MARKS (INTERNATIONAL REGISTRATION) RULES, 2003
ARRANGEMENT OF RULES
PART I – PRELIMINARY
5. |
Institute to be office for Kenya.
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PART II – APPLICATION IN KENYA FOR INTERNATIONAL REGISTRATION
7. |
Examination and forwarding by Institute.
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PART III – INTERNATIONAL APPLICATIONS DESIGNATING KENYA
10. |
Applicant’s rights on refusal after initial examination.
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12. |
Refusal to be in accordance with treaty, etc.
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14. |
Supplementary Register.
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15. |
Extracts from Register.
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16. |
Effects of international registration.
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PART IV – TRANSFORMATION OF INTERNATIONAL REGISTRATION TO A KENYAN REGISTRATION
18. |
Application to transform to Kenyan registration.
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19. |
Automatic registration.
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20. |
Continuation of unfinished proceedings.
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PART V – PENDING APPLICATIONS
21. |
Pending applications.
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SCHEDULES
TRADE MARKS (INTERNATIONAL
REGISTRATION) RULES, 2003 [L.N. 145/2003.]
PART I – PRELIMINARY
1. |
Citation
These Rules may be cited as the Trade Marks (International Registration) Rules, 2003.
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2. |
Definitions
In these Rules, unless the context otherwise requires—
“applicable treaty” means whichever between the Madrid Agreement or the Madrid Protocol which applies to the registration;
“international registration” means registration with the International Bureau under the Madrid Agreement or the Madrid Protocol.
“Trade Marks Rules” means the rules of that name made under the Act.
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3. |
Forms
The forms set out in the First Schedule shall be the prescribed forms for the purposes of these Rules.
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4. |
Fees
The prescribed fees for purposes of these Rules shall be as set out in the Second Schedule.
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5. |
Institute to be office for Kenya
The Institute shall be the office for Kenya for the purpose of the Madrid Agreement and the Madrid Protocol and, in carrying out that function, the Institute shall comply with the Madrid Agreement and the Madrid Protocol and the regulations made under those treaties.
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PART II – APPLICATION IN KENYA FOR INTERNATIONAL REGISTRATION
6. |
Application
(1) |
A person who is a proprietor of a registered trade mark, or who has applied for the registration of a trade mark, may file an application for international registration of the trade mark with the Institute if, under the applicable treaty, the person is entitled to do so.
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(2) |
An application under subrule (1) shall be made in accordance with the applicable treaty and shall be accompanied by the prescribed fee payable to the Institute and the applicable fees under the applicable treaty.
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7. |
Examination and forwarding by Institute
(1) |
The Institute shall examine the application for international registration and, if it complies with the requirements under the applicable treaty, forward the application together with the applicable fees, if any, to the International Bureau.
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(2) |
The expenses incurred by the Institute in forwarding the application to the International Bureau shall be met by the applicant.
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PART III – INTERNATIONAL APPLICATIONS DESIGNATING KENYA
8. |
Application of Part
This Part shall apply with respect to an application for international registration of a trade mark that requests the extension of protection to Kenya.
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9. |
Initial examination
Upon being notified of an application by the International Bureau, the Institute shall examine the application and either—
(a) |
notify the International Bureau that protection for the trade mark is refused if there are grounds for doing so under the applicable treaty; or
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(b) |
advertise the application in accordance with the Trade Mark Rules.
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10. |
Applicant’s rights on refusal after initial examination
(1) |
If the Institute notifies the International Bureau, under rule 8(a), that protection for the trade mark is refused the applicant shall have the same remedies under the Trade Marks Rules as he would have if the application was an application thereunder made directly to the Institute.
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(2) |
If, as a result of the applicant pursuing his remedies under subrule (1), the refusal is withdrawn, the Institute shall advertise the application under rule 9(b).
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11. |
Opposition
(1) |
Any person may, within sixty days of the advertisement of an application under rule 9 (b), give notice to the Registrar of opposition to the intended registration.
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(2) |
The Registrar shall, upon receiving a notice of opposition under this rule, give notice of the same to the International Bureau, indicating the main grounds contained therein.
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(3) |
The provisions of the Trade Marks Rules shall, with necessary modifications, apply to a notice served under this rule.
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(4) |
If it is determined, based on grounds under the applicable treaty, that the trade mark should be refused protection, the Institute shall notify the International Bureau that protection for the trade mark is refused.
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12. |
Refusal to be in accordance with treaty, etc.
In refusing protection for a trade mark under rule 8(a) or 10(3), the Institute shall act in accordance with the applicable treaty and the regulations under that treaty.
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13. |
Partial refusal
If protection is refused with respect to some, but not all, of the goods or services for which protection is sought, this Part shall apply, with necessary modifications, as though there were two applications, one with respect to the goods or services for which protection was refused and one with respect to the goods or services for which protection was refused.
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14. |
Supplementary Register
(1) |
The Registrar shall maintain a Register to be known as the Supplementary Register (International) for the purpose of recording all international trade marks registered under these Rules together with the names and addresses of their proprietors.
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(2) |
The provisions of the Trade Marks Rules in relation to the Register maintained thereunder shall, with necessary modifications, apply to the Supplementary Register maintained under this rule.
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15. |
Extracts from Register
(1) |
Any person may request the Registrar to cause a search to be made in the Supplementary Register maintained under rule 14 in respect of specified goods or services and may request for extracts thereof or copies of other documents maintained by the Registrar.
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(2) |
Requests under this rule for a search and for extracts from the Supplementary Register or copies of other documents, shall be in Forms TM 27 and TM 54 of the Trade Marks Rules respectively.
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16. |
Effects of international registration
(1) |
A trade mark that has been internationally registered, the protection of which has been extended to Kenya, shall have the same effect and enjoy the same protection as specified in section 7 of the Act in relation to trade marks registered under Part A of the Register maintained under that section.
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(2) |
Subrule (1) does not apply if protection for the trade mark is refused under rule 8 (a) or 10 (3) or, if protection is refused with respect to some, but not all, of the goods or services to which the trade mark relates, subrule (1) does not apply with respect to those goods or services.
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(3) |
A trade mark described in subrule (1) may be—
(a) |
taken off the Register under section 29 of the Act;
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(c) |
expunged or varied under section 35 of the Act; or
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(d) |
expunged or varied under section 36 of the Act.
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(4) |
The Trade Mark Rules shall apply, with necessary modifications, for the purposes of subrule (3).
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PART IV – TRANSFORMATION OF AN INTERNATIONAL REGISTRATION
TO A KENYAN REGISTRATION
17. |
Application of Part
(1) |
This Part applies if the international registration of a trade mark registered under the Madrid Protocol is cancelled at the request of the office where the basic registration was made if, before being cancelled—
(a) |
the protection of the trade mark was extended to Kenya;
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(b) |
the extension of the protection of the trade mark to Kenya was requested and had not been refused but the time for giving notification of such a refusal under the applicable treaty had not expired; or
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(c) |
the extension of the protection of the trade mark to Kenya was requested and refused but the proprietor’s remedies to challenge that refusal had not yet been exhausted.
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(2) |
In this rule, “basic registration” means the registration of a trade mark in a country, other than Kenya, upon which the international registration is based.
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18. |
Application to transform to Kenyan registration
(1) |
The proprietor of an internationally registered trade mark which is cancelled may apply to have the international registration transformed to a Kenyan registration.
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(2) |
An application under subrule (1) shall be made to the Registrar in form TM (International) 1.
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|
19. |
Automatic registration
If an application for a transformation is made in the circumstances described in rule 13 (1) (a), the application to transform the international registration shall be granted and the trade mark shall be registered.
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20. |
Continuation of unfinished proceedings
If an application for a transformation is made in the circumstances described in paragraph (b) or (c) of rule 13(1), the application to transform the international registration shall be dealt with under the Trade Marks Rules as though it were an application under those Rules subject to the following—
(a) |
If the international application had been advertised under rule 8(b), that advertisement shall be deemed to have been an advertisement of the application under the Trade Marks Rules;
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(b) |
any steps or proceedings taken under these Trade Marks Rules with respect to the extension of protection to Kenya before the international registration was cancelled shall be deemed to have been taken with respect to the transformation application and any such proceedings that have not been completed shall be continued under the Trade Marks Rules.
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PART V – PENDING APPLICATIONS
21. |
Pending applications
(1) |
Any international registration in respect of which an application is pending before the Institute at the time of the coming into operation of these Rules shall—
(a) |
where the period of notice prescribed under the applicable treaty has expired, be entered into the register maintained under rule 14; and
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(b) |
where the period referred to in paragraph (a) has not expired, be examined by the Registrar in accordance with these Rules.
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(2) |
Any person with an objection to any registration under paragraph (a) may apply for rectification of that register under rule 16(3).
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SECOND
SCHEDULE [Rule 4.]
FEES
|