Intellectual Property

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INTELLECTUAL PROPERTY

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Assets of Intellectual Property (IP) are the lifeblood of any commercial or other business. Safeguarding these valuable assets is essential for the longevity and profitability of any enterprise, whether large or small.

Intellectual Property encompasses a broad range of intangible assets that are the unique, original creations of the human mind. These assets include literary, artistic, and musical works; innovations and inventions; and distinctive symbols, names, designs, and phrases. Protecting these assets is crucial for maintaining their value and ensuring that their creators can fully benefit from their use.

Under Intellectual Property Law, owners are granted exclusive rights to their creations, allowing them to control and profit from their use. These rights include Copyrights, Patents, Trademarks, Industrial Design Rights, Trade Secrets, and more.

At Adhiambo Okech & Associates Advocates LLP, we provide comprehensive and reliable IP law services to entrepreneurs, companies, institutions, and organizations across Kenya and selected international markets. Our goal is to ensure that your intellectual property is fully protected, allowing you to leverage its value with confidence. We offer these services at competitive rates, ensuring that safeguarding your IP is both accessible and effective.

Trade Secrets

In today’s highly competitive business environment, safeguarding trade secrets has become more crucial than ever. A trade secret is confidential information vital to the success and profitability of a company, institution, or organization. This information provides a competitive edge, distinguishing you from your rivals in the marketplace. Due to its critical importance, trade secrets are often referred to as “Confidential Information” in many jurisdictions. A well-known example is the secret formula used by the Coca-Cola Company.

Ensuring the security of your trade secrets is essential for maintaining your business’s competitive advantage and long-term success.Under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement established by GATT, a trade secret must meet there three key criteria to qualify for protection.

  • Anonymity and Secrecy to General Public or Competitors;
  • Economic or Commercial Worth;
  • Adequate Perennial Endeavor by its owners to keep it up confidential and secret to others.

 

A trade secret can be anything associated with the products or services of an organization, or process of manufacturing or marketing, business plans or strategies, core competencies, theoretical or practical expertise, production technology, quality, ingenuity, etc.

Trade Secrets Law and Legal Services

The trade secrets are protected in different ways than those used in the cases of trademarks, copyrights, or patents. In some countries of the world including the USA, China, etc., there are special laws and legal services of a trade secret for fair business and trade practices. Adhiambo Okech & Associates Advocates LLP endeavors to provide the following legal services of a trade secret for protecting your trade secrets, in the domestic and international arenas of all around the world.

  • Employment Agreements and Trade Secret Policies: with employees which bear clauses of full confidentiality, non-disclosure and non-compete, even after termination of employment.
  • Non-Disclosure Agreements (NDAs): with employees and other business supporting companies, to keep their trade secrets confidential and safe.
  • Adequate Confidential Documentation: serving as ownership and creditability evidence, in case of any trade secret disputes.

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Kenya is member of the International Convention & PCT. We assist with trademark applications filed directly, as well as patent & design (ARIPO) applications.

HOW TO REGISTER A TRADE MARK

  1. The requirements for applications filed directly in Kenya are as follows: 
  1. Full name, street address and description of the applicant (including trading style, if any, and state/country of incorporation, if incorporated).
  2. List of goods and/or services.
  3. A simply signed power of attorney.
  4. Clear print of the device mark.
  5. If priority is claimed: Certified copy of home application/ registration.
  1.   Classification
  1. The 11th Edition of the International Classification (Nice Agreement) is followed.
  2. Multi-class – Yes.
  1.   General
  1. a) Duration : 10 years from filing date and renewal for further periods of 10 years.
    b) Duration if priority claimed: 10 years from priority date and renewable from further periods of 10 years.
  2. Use : If not used for a continuous period of 5 years and one month, a mark may be removed from register.
  3. Marking :  Not compulsory.
  4. Licenses : Are permitted.
  5. Assignments of applications are permitted.
  6. Searches available within approximately 7-10 working days from instruction and are conducted on an online register.
  1. Costs USD
  1. a) Application: First trade mark in 1 class $1550, additional classes filed simultaneously $685 each.
    b) Additional applications filed simultaneously: $1450 per mark.
    c) Claiming priority: $230 each.
  2. Assignment: First trade mark $990, additional marks filed simultaneously $530 each; additional classes $240 each.
  3. Change of name: First trade mark $670, additional marks filed simultaneously $310 each; additional classes $130 each.
  4. Change of address: First trade mark $610, additional marks filed simultaneously  $380 each; additional classes $190 each.
  5. a) Renewal: First trade mark/class $950, additional marks renewed simultaneously $750 each; Additional classes renewed simultaneously (for multi-class registrations) $340 each.
    b) Late renewal fine: $390 per mark.
  6. Searches:  1 trade mark in 1 – 4 classes $500; additional classes over 4 $145 each.
    Status search: $295 per mark.

* Please note that the application fee covers the filing costs and normal prosecution of the application only.  Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.


** Above quotations exclude courier charges

HOW TO REGISTER A PATENT OR DESIGN

In our experience, it is better to file an ARIPO regional application designating at least Kenya rather than a national application directly in Kenya. The main reason for our opinion is that ARIPO is run by WIPO and, accordingly, operates much more efficiently than the Kenya Patent and Design Offices. Furthermore, the cost of filing an ARIPO application designating only Kenya is about the same as the cost of filing a national application directly in Kenya. A further benefit of the ARIPO route is that it is possible to designate other ARIPO member countries by paying additional designation fees at a relatively nominal surcharge.

We assist you with patent, design & trade mark applications in Uganda, a member of the International Convention, ARIPO and of the PCT.

HOW TO REGISTER A TRADE MARK

  1.     The requirements for filing applications in Uganda are as follows: 
  1. Full name, street address and description of the applicant (including trading style, if any, and state/ country of incorporation, if incorporated).
  2. List of goods and/ or services.
  3. A simply signed power of attorney.
  4. Clear print of the mark.
  1.   Classification
  1. The Trademarks Act No.17 of 2010, in force since September 3rd, 2010 states that the 9th edition of the Nice classification of goods and services consisting of 45 classes is applied.
  2. Multi-class – No.
  1.   General
  1. Duration: 7 years from date of application and renewable for further periods of 10 years (even if priority is claimed, the date is still calculated from application date).
  2. Use: If a mark has not been used for a continuous period of 5 years, it can be removed.
  3. Marking: Not compulsory, but advisable.
  4. Licenses: Must be recorded at the Registrar.
  5. Collective marks: Registrable.
  6. Assignments of applications are permitted.
  7. Searches available within approximately 7-14 working days from instruction and are conducted on an online official register.
  1.   Costs USD
  1. a) Application: First trade mark (including compulsory search) $1360.00; additional marks filed simultaneously $1300.00 each.
    b) Publication fees: $230.00 per mark (quarter page)
    c) Registration fees: $450.00 per mark.
    d) Priority claim: $125.00 per mark.
  2. Assignment: First trade mark (within 6 months of acquisition) $750.00, additional trademarks filed simultaneously $550.00 each.
  3. Change of name: First trade mark/class $490.00, additional trademarks filed simultaneously $380.00 each.
  4. Change of address:  First trade mark/ class $480.00, additional trademarks filed simultaneously $310.00 each.
  5. Licences: First trade mark $910.00, additional trademarks filed simultaneously $380.00 each.
  6. a) Renewal: First class $990.00, additional classes renewed simultaneously $790.00 each.
    b) Late renewal fine (2 months grace period): $140.00 per mark.
  7. Search: 1 trade mark in 1 class $480.00; additional classes $300.00 each.

* Please note that the application fee covers the filing costs and normal prosecution of the application only. Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.

** Please further note that registration fees are dependable on the year in which the mark reaches registration.

*** Above quotations exclude courier charges.

HOW TO REGISTER A PATENT OR DESIGN

In our experience, it is better to file an ARIPO regional application designating at least Uganda rather than a national application directly in Uganda. The main reason for our opinion is that ARIPO is run by WIPO and, accordingly, operates much more efficiently than the Uganda Patent and Design Offices. Furthermore, the cost of filing an ARIPO application designating only Uganda is about the same as the cost of filing a national application directly in Uganda. A further benefit of the ARIPO route is that it is possible to designate other ARIPO member countries by paying additional designation fees at a relatively nominal surcharge.

We assist you with patent, design & trade mark applications in Tanzania, a member of the International Convention, ARIPO and of the PCT.

HOW TO REGISTER A TRADE MARK

  1.     The requirements for filing applications in Tanzania are as follows: 
  1. Full name, street address and description of the applicant (including trading style, if any, and state/ country of incorporation, if incorporated).
  2. The type of the entity i.e. whether the entity is the company, business name or partnership;
  3. The registration number of the company if the proprietor is a corporate entity.
  4. List of goods and/ or services.
  5. A simply signed power of attorney (must be submitted at time of filing).
  6. Clear print of the mark.
  7. If Convention priority is claimed: a certified copy of the basic application together with an English translation where necessary.
  1.   Classification
  1. The 45 classes of the International Classification are followed.
  2. Multi-class – No.
  1.   General
  1. a) Duration: 7 years from date of application and renewable for further periods of 10 years.
    b) Duration if priority claimed: 7 years from priority date and renewable from further periods of 10 years.
  2. Use: If a mark has not been used for a continuous period of 5 years, it may be removed.
  3. Marking: Advised.
  4. Licenses: Must be recorded at the Registrar.
  5. Assignments of applications are permitted.
  6. Search available within approximately 5-10 working days from instruction and are conducted on an official register.
  1. Costs USD
  1. a) Application: First trade mark $1220.00; additional marks filed simultaneously $1090.00 each.
    b) Claiming priority: $95.00 per mark.
  2. Assignment: First trade mark $700.00, additional trade marks filed simultaneously $390.00 each.
  3. Change of name or address: First trade mark $420.00, additional marks filed simultaneously $290.00 each.
  4. Renewal: First trade mark $690.00, additional marks renewed simultaneously $510.00 each.
  5. a) Search: 1st mark $460.00; additiional marks $360.00 each.
    b) Spot search: $300.00 per mark.

* Please note that the application fee covers the filing costs and normal prosecution of the application only. Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.

** Above quotations exclude courier charges.

HOW TO REGISTER A PATENT OR DESIGN

In our experience, it is better to file an ARIPO regional application designating at least Tanzania rather than a national application directly in Tanzania. The main reason for our opinion is that ARIPO is run by WIPO and, accordingly, operates much more efficiently than the Tanzania Patent and Design Offices. Furthermore, the cost of filing an ARIPO application designating only Tanzania is about the same as the cost of filing a national application directly in Tanzania. A further benefit of the ARIPO route is that it is possible to designate other ARIPO member countries by paying additional designation fees at a relatively nominal surcharge.

Rwanda is member of the International Convention & PCT. We assist with trademark applications filed directly, as well as patent & design (ARIPO) applications.

HOW TO REGISTER A TRADE MARK

  1.     The requirements for applications filed directly in Rwanda are as follows: 
  1. Full name, street address and description of the applicant (including trading style, if any, and state/ country of incorporation, if incorporated).
  2. List of goods and/ or services.
  3. A simply signed power of attorney – we notarise on our side.
  4. Clear print of device mark.
  5. If convention priority is claimed: a certified copy of the basic application, together with a verified French translation thereof.
  1.   Classification
  1. The 42 classes of the International Classification of goods and services are followed.
  2. Multi-class – Yes.
  1.   General
  1. Duration: 10 years from date of application and renewable for further periods of 10 years. See below for further information***
  2. Use: Not compulsory.
  3. Marking: Not required, but advisable.
  4. Assignments of applications are permitted.
  5. Searches available within approximately 5 – 10 working days from instruction and are conducted on an online official register.
  1.   Costs USD
  1. a) Application: 1 mark in 1 class $1250.00; additional classes filed simultaneously $390.00 each.
    b) Additional trade marks filed simultaneously $1160.00 each.
    c) Claiming priority: $80.00.
  2. Assignment: First trade mark $980.00, additional trade marks filed simultaneously $690.00 each.
  3. Change of name or address: First trade mark $770.00, additional trade marks filed simultaneously $550.00 each.
  4. a) Renewal: First mark $990.00, additional marks filed simultaneously $780.00 each.
    b) Late renewal fine: $210.00 per mark.
  5. a) Search: 1 mark: $460,00; additional marks $360,00 each.
    b) Search: Status $390,00.


* Please note that the application fee covers the filing costs and normal prosecution of the application only. Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.


** Above quotations exclude courier charges.


*** Prior to 2009, there was no provision for renewal of trade marks in Rwanda. But after their Law on the Protection of Intellectual Property came into effect on 26/10/2009, trade marks are to be renewed every 10 years (Article 153).


With respect to the trade marks that had been registered in Rwanda before the law coming into effect in 26/10/2009, these may be renewed at any period before the expiry of 10 years from the date the law took effect, that is on or before 26th October, 2019. Should the proprietors choose to renew their marks earlier (say in 2013), the next renewal date will be in 10 years (that is 2023).

HOW TO REGISTER A PATENT OR DESIGN

In our experience, it is better to file an ARIPO regional application designating at least Rwanda rather than a national application directly in Rwanda. The main reason for our opinion is that ARIPO is run by WIPO and, accordingly, operates much more efficiently than the Rwandan Patent and Design Offices. Furthermore, the cost of filing an ARIPO application designating only Rwanda is about the same as the cost of filing a national application directly in Rwanda. A further benefit of the ARIPO route is that it is possible to designate other ARIPO member countries by paying additional designation fees at a relatively nominal surcharge.

We assist with patent, design & trademark applications in Burundi, a member of the International Convention, but not a member of the PCT.

HOW TO REGISTER A PATENT

Patent protection in Burundi is available via a national filing.  Burundi is a member of the International Convention, but is not a member of PCT.

The requirements for filing an application in Burundi are as follows:

  1. Power of Attorney (simply signed) – can be late filed within 2 months;
  2. Priority Assignment with French translation – can be late filed within 3 months;
  3. Specification, claims, abstract and drawings in French – required on the day of filing; and
  4. Certified copy of priority application with verified French translation of cover page – can be late filed within 3 months.

The cost of filing a patent application in Burundi is currently in the region of about US$ 3300.00.  To this must be added about US$ 300.00 for each priority claim.

Should it be required, we can assist with the preparation of any translation from English to French at a cost of US$ 30.00 per 100 words.

HOW TO REGISTER A DESIGN

Burundi is a member of the International Convention.

The requirements for filing a design application in Burundi are as follows:

  1. Power of Attorney (simply signed) – required on the day of filing;
  2. Description and title of design in French – required on the day of filing;
  3. 2 sets of formal drawings – required on the day of filing;
  4. International classification – required on the day of filing;
  5. Certified copy of priority document with French translation – can be late filed within 3 months; and
  6. Priority Assignment if applicant in Burundi differs from applicant of priority document – can be late filed within 3 months.

We estimate that the cost of filing a design application in Burundi will be about US$ 3000.00.  To this must be added the fees for claiming each priority date at about US$ 110.00 per priority claim.

HOW TO REGISTER A TRADE MARK

  1. Filing requirements
    1. Full name, street address and description of the applicant (including trading style, if any, and state/country of incorporation, if incorporated)
    2. List of goods and/or services.
    3. A simply signed power of attorney.
    4. Clear print of device mark.
    5. If Convention priority is claimed: a certified copy of the basic application together with a verified French translation thereof.

    1. Classification
    1. The International Classification of Goods and Services (Nice Classification) is applied
    2. Multi-class – Yes.

    1. General
    1. a) Duration: 10 years from date of application and renewable for further periods of 10 years
      b) Duration if priority claimed: 10 years from priority date and renewable from further periods of 10 years
    2. Use :  Not required but advisable.
    3. Marking : Not required, but advisable.
    4. Licenses : No provision to record a license officially.  Licensees can be appointed by private contract.
    5. Assignments : Of pending applications are permitted.
    6. Searches available within approximately 2-3 weeks from instruction and are conducted on an online official register.
  1. Costs USD
    1. a) Application: 1-3 classes: $1530, additional classes filed simultaneously $270 each
      b) Additional trade marks filed simultaneously $1395 each.
      c) Registration fees: $210 per mark.
      d) Claiming priority: $60
    2. Assignment: First trade mark $990, additional trade marks filed simultaneously $760 each.
    3. Change of name or address: First trade mark $750, additional marks filed simultaneously $660 each.
    4. a) Renewal: 1-3 classes $1150, additional classes renewed simultaneously $480 each.
      b) Additional marks renewed simultaneously $990 each.
      c) Late renewal fine per late month: $160 per mark.
    5. Search:  1 mark in any number of classes:  $610;  additional marks $510 each.

* Above quotations exclude courier charges.

** Please note that the application fee covers the filing costs and normal prosecution of the application only.  Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.

*** Please note that registration fees are dependable on the year in which the mark reaches registration.

South Sudan is member of the International Convention & PCT. We assist with trademark applications filed directly, as well as patent & design (ARIPO) applications.

HOW TO REGISTER A TRADE MARK

  1.     The requirements for applications filed directly in Sudan are as follows: 
  1. Full name, street address and description of the applicant (including trading style, if any, and state/ country of incorporation, if incorporated).
  2. List of goods and/ or services.
  3. A special power of attorney, notarised and stamped with company seal.
  4. Clear print of the device mark.
  5. Block for each class of product or service.
  6. Certificate of Incorporation for companies (if necessary, with a legalized translation into English), legalised up to the Sudanese Consulate.
  7. At time of grant, the TMO will request an affidavit from the applicant attesting that the company has not changed its address nor sold the mark.
  1.   Classification
  1. The 8th Edition of the International Classification (Nice Agreement) is followed.
  2. Multi-class – No
  3. Class 33 and alcoholic goods in class 32 cannot be registered.
  1.   General
  1. Duration: 10 years from date of application and renewable for further periods of 10 years (even if priority is claimed, the date is still calculated from application date).
  2. Use: Not compulsory.
  3. Marking: Compulsory.
  4. Licenses: Permitted.
  5. Assignments of applications are permitted.
  6. Searches available within approximately 1 – 5 weeks (depends on TMO) from instruction.
  1.   Costs USD
  1. a) Application: First trade mark/ class $970.00; additional marks filed simultaneously $860.00 each.
    b) Publication fees: $310.00 per mark.
    c) Registration fees: $250.00 per mark.
    d) Claiming priority: $70.00 per mark.
  2. Assignment:  Fist trade mark $790.00, additional trade marks filed simultaneously $500.00 each.
  3. Change of name or address: First trade mark $390.00, additional trade marks filed simultaneously $300.00 each.
  4. a) Renewal: First mark $890.00, additional marks renewed simultaneously $750.00 each.
    b) Renewal: Late renewal fine (6 month grace period): $190.00.
  5. Search: 1 mark in 1 class – From $380.00; additional classes $220.00 each.
    Search: Each additional mark $280.00.


* Please note that the application fee covers the filing costs and normal prosecution of the application only. Additional costs could well arise upon examination of the application which are difficult to estimate as it would depend on the various requirements raised by the Registrar i.e. disclaimers, admissions etc.

** Please further note that publication and registration fees are dependable on the year in which the mark reaches publication/registration.

*** Above quotations exclude courier charges.

HOW TO REGISTER A PATENT OR DESIGN

In our experience, it is better to file an ARIPO regional application designating at least Sudan rather than a national application directly in Sudan. The main reason for our opinion is that ARIPO is run by WIPO and, accordingly, operates much more efficiently than the Sudanese Patent and Design Offices. Furthermore, the cost of filing an ARIPO application designating only Sudan is about the same as the cost of filing a national application directly in Sudan. A further benefit of the ARIPO route is that it is possible to designate other ARIPO member countries by paying additional designation fees at a relatively nominal surcharge.

HOW TO REGISTER A TRADE MARK

  1. Filing requirements
  1. Full name, street address and description of the applicant (including trading style, if any, and state/country of incorporation, if incorporated).
  2. List of goods and/or services.
  3. A simply signed power of attorney.
  4. Electrotype (may be obtained locally) and clear print of device mark.
  5. If priority is claimed: a certified copy of home application/ registration together with verified French translation.
  1.   Classification
  1. The 45 classes of the International Classification of goods and services are followed.
  2. Multi-class – Yes.
  1.   General
  1. Duration : 10 years from filing date and renewal for further periods of 10 years (even if priority is claimed, the date is still calculated from application date).
  2. Use :  compulsory within a period of three years commencing with registration.
  3. Marking: No provision.
  4. Licenses: Must be registered.
  5. Assignments: Of applications are permitted.
  1.   Costs USD
  1. a) Application: 1 – 3 classes: $1600, additional classes over three filed simultaneously $410 each.
    b) Additional trade marks filed simultaneously $1520 each.
    c) Claiming priority: $525.
  2. Assignment: First trade mark $2400, additional trade marks assigned simultaneously $2130 each.
  3. Change of name or address: First trade mark $1180, additional trade marks filed simultaneously $1050 each.
  4. a) Renewal: 1 mark in 1 – 3 classes $1520, additional classes renewed simultaneously $410 each.
    b) Renewal: additional marks renewed simultaneously: $1390 each.
    c) Renewal: Late renewal fine (6 month grace period): $560.
  5. Search:  1 mark in 1-3 classes $670;  additional classes $270 each.
    Search: additional marks $570 each.

*Above quotations exclude courier charges.

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