Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

The following legislation governs trademark litigation in Kenya:

• Trademarks Act (Cap 506): The primary source of substantive and procedural law on trademarks, this act provides for:
• • the registration and recognition of trademarks;
  • the protection of rights created; and
  • the enforcement mechanisms in the event of infringement.
• Anti-counterfeit Act (13/2008): This act establishes the Anti-counterfeit Agency (ACA), which combats counterfeiting and provides for measures to prevent trade in counterfeit goods.
• Industrial Property Act (3/2001): This act establishes the Kenya Industrial Property Institute, which administers IP rights, including trademarks.
• The applicable court rules: The proceedings of courts in Kenya are guided by legislation, rules and guidelines such as:
• • the Civil Procedure Rules 2010;
  • the Criminal Procedure Code (Cap 75); and
  • other relevant practice guidelines as amended from time to time.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

The following bilateral agreements have effect in Kenya:

• the Paris Convention for the Protection of Industrial Property (1883);
• the Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to the Madrid Agreement (1989);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (1994); and
• the African Regional Intellectual Property Organization Protocols.

The following multilateral agreements have effect in Kenya:

• the United States-Kenya Trade and Investment Framework Agreement; and
• the Economic Partnership Agreement between the European Union and the East African Community.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

The following agencies are involved:

• Kenya Intellectual Property Institute: Established under the Industrial Property Act (3/2001), this body is responsible for:
• • registering and administrating trademarks;
  • handling opposition and cancellation proceedings; and
  • advising on trademark matters.
• ACA: This was established by and enforces the Anti-counterfeit Act. It is responsible for:
• • conducting investigations, raids and seizures of counterfeit goods; and
  • prosecuting offenders involved in the trade of counterfeit products.
• The Customs Department of the Kenya Revenue Authority: This department works closely with the ACA to prevent the import of counterfeit goods that infringe trademark rights.
• The High Court: With jurisdiction over IP matters, this court:
• • handles infringement cases; and
  • provides appropriate remedies upon determination.
• The court also hears appeals of decisions of the registrar of trademarks. Its decisions can be appealed to the Court of Appeal and the Supreme Court successively.
• Directorate of Criminal Investigations: This body:
• • investigates criminal matters involving trademarks; and
  • refers offenders for prosecution.

The framework for enforcement and interpretation of trademarks entails a combination of legislative, regulatory and judicial interventions, as applicable.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

Trademark litigation is heard in the following forums:

• Kenya Industrial Property Institute (KIPI): Opposition, cancellation and rectification proceedings are brought before the KIPI for determination. In some instances (Section 43 of the Trademarks Act (Cap 506)), a party has the option to bring a matter before either the registrar of trademarks or the High Court. Such matters are presided over by the registrar of trademarks.
• The High Court: Depending on the nature of the dispute, a trademark dispute may be filed before either the Civil Division or the Commercial and Tax Division of the High Court. Further, decisions of the KIPI may be appealed to this court. The High Court is presided over by a judge.
• The Court of Appeal: This court hears appeals from the High Court. Depending on their nature and complexity, appeals can be heard by either a single judge or a bench of judges constituted for that specific purpose.
• The Supreme Court: The highest appellate court, this handles appeals on matters of law and constitutional interpretation from the Court of Appeal. At the Supreme Court, a bench of judges hears the appeals.

In Kenya, trademark validity and infringement are typically handled in separate proceedings:

• Trademark validity:
• • Challenges to registration: These are usually initiated before the KIPI or through court action. They aim to invalidate a registered trademark based on grounds such as:
  • • prior use;
    • lack of distinctiveness; or
    • fraud during registration.
  • Cancellation of registration: This can be sought by third parties or by the KIPI itself if the registered trademark:
  • • is found to be invalid; or
    • no longer meets the requirements for registration.
• Trademark infringement:
• • Civil proceedings: These are filed in the Kenyan courts by the trademark owner against someone who is using a confusingly similar mark, causing harm to the owner's reputation or business.
  • Criminal proceedings: In some cases, trademark infringement can also be a criminal offence, leading to fines or imprisonment.

Validity challenges and infringement actions, while related, are typically addressed as separate legal issues in Kenya. Courts usually have the authority to consider both the infringement and validity of trademarks within the same case. However, if either of these issues becomes a significant point of dispute, a separate proceeding addressing that specific issue may be initiated.

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

Disputes involving the KIPI are heard by the registrar of trademarks.

Matters and appeals before the High Court are typically heard by a single judge. However, if a matter is certified by the court as raising a substantial question of law, it is heard by a panel with an uneven number of judges, being not less than three, assigned by the chief justice in consultation with the principal judge. The number of judges will be determined by the weight of the subject matter.

Appeals before the Court of Appeal are heard by a single judge or a bench (panel) of judges.

Appeals before the Supreme Court are heard by a bench (panel) of judges.

Jury trials are not available in Kenya.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

Some opportunities for forum shopping exist due to:

• the structure of the judiciary; and
• differences in procedural rules and expertise between various forums.

Section 53 of the Trademark Act (Cap 506) provides an option, in some instances, to bring a dispute before either the High Court or the registrar of trademarks. This choice could be guided by factors such as:

• the speed of proceedings;
• the expertise of the forum; or
• previous rulings in similar cases.

If the dispute is brought before the High Court, the applicable rules on jurisdiction will typically require the matter to be filed at the Commercial and Tax Division of the High Court.

However, mechanisms such as case transfers, judicial pronouncements and jurisdictional clarity are available to mitigate the abuse of forum shopping.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

Under the Trademarks Act (Cap 506), the persons that have standing to file a trademark infringement suit are:

• the registered trademark owner;
• a licensee;
• an assignee; and
• authorised users of the trademark.

For an infringement suit to be sustained and entertained, it must:

• be brought by a person with legal standing;
• demonstrate the alleged infringement; and
• be substantiated with appropriate evidence and legal arguments.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes, a defendant that resides or is located outside of Kenya can be sued in Kenya, provided that there are sufficient connecting factors that justify filing the lawsuit in the country. These factors include the following:

• The trademark is registered and used in connection with goods or services offered in Kenya;
• The proprietor is a Kenyan citizen or resides in Kenya;
• The breach or infringing activities:
• • occurred in Kenya; or
  • can be attributed to actions in Kenya;
• The lawsuit is based on a tort committed in Kenya; and/or
• An injunction is sought regarding actions to be performed in Kenya, or to prevent or remove a nuisance in Kenya, regardless of whether damages are also being claimed.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes, multiple defendants can be sued together for trademark infringement. This situation may arise where:

• there are common questions of law or fact related to the defendants;
• each defendant was involved in the alleged infringement; and
• the actions of the defendants were closely connected enough to justify a single lawsuit.

Where there is a need to include other defendants in a suit, the Civil Procedure Rules 2010 allow an application to be made for the joinder of parties in civil suits if there is a common question of law or fact involved

The Kenyan courts have the discretion to handle such cases, ensuring that the legal process is efficient and just for all parties involved.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Yes. Any aggrieved person can apply for cancellation of a trademark together with the supporting evidence. The application can be made to either the registrar of trademarks or the High Court, subject to Section 53 of the Trademarks Act (Cap 506).

The grounds for cancellation of a trademark are as follows:

• Non-use: The plaintiff proves that a trademark:
• • has not been used genuinely for a continuous period of at least five years after registration; or
  • was registered without any genuine intention to use it for the goods or services specified.
• This lack of use must have continued until at least one month before the cancellation proceedings were filed.
• Non-distinctiveness or genericness: The trademark:
• • has become a generic term for the goods and services for which it was registered; or
  • lacks the requisite distinctiveness.
• Wrongful entry in the trademark register: It is proven that:
• • the trademark was registered in violation of the applicable trademark laws or the registrability requirements; or
  • the continued existence of the mark in the register is wrongful.
• Deceptive or confusing marks: A registered mark is found to be deceptive or likely to deceive the public.

The legal provisions under the Trademarks Act (Cap 506) relating to legal proceedings and appeals also apply to international trademarks.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A declaration of non-infringement can be requested through an application to either the High Court or the registrar of trademarks. This application aims to confirm that the claimant's use of a specific mark does not infringe any existing registered trademarks. To achieve this, the third party must demonstrate the following:

• The use of a sign or mark is lawful and does not infringe on a registered trademark;
• The mark is sufficiently distinct from the registered trademark; or
• The use falls within the exceptions provided by the law (eg, fair use).

A declaration of invalidity is sought through a petition to either the High Court or the registrar of trademarks. The application, if successful, results in cancellation or revocation of the trademark registration. The grounds for declaration of invalidity of a trademark include the following:

• The mark was registered or its continued existence is contrary to the applicable trademark laws or registrability requirements; or
• The mark infringes on existing prior rights, such as:
• • an earlier trademark registration; or
  • a well-known mark.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

Under Section 7 of the Trademarks Act, trademark infringement arises where a person that is not the owner of the registered trademark or a registered user uses a mark that is identical to or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or provision of services.

Additionally, the Trademarks Act (Cap 506) provides protection against infringement for ‘well-known' trademarks, as outlined in Sections 5 and 15A. This allows unregistered trademarks to enjoy certain benefits similar to those of registered trademarks.

4.2 How is infringement determined?

The court will consider the following when determining trademark infringement:

• Registration status: Infringement proceedings can only be brought in relation to registered trademarks.
• Likelihood of confusion: The court will assess whether the infringing mark or the unauthorised use of the registered trademark is confusing or likely to confuse consumers about the source of the goods or services.
• Identical or similar marks: The court will assess whether there is any similarity in appearance, phonetics or concept between the registered mark and the alleged infringing mark.
• Distinctiveness of the mark: The court will assess:
• • the similarity between the marks; and
  • the level of distinctness of the registered trademark.
• Available defences: The court will consider whether the defendant's use of the registered trademark was legally justified.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

Yes. The intent of the infringer plays a significant role in trademark infringement cases.

The court will evaluate whether the infringer acted knowingly, maliciously and intentionally in relation to the alleged infringement. Wilful infringement carries stricter legal consequences than unintentional infringement. These consequences can include aggravated, punitive or enhanced damages, which the courts have the discretion to award.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

A trademark owner has several options to enforce its rights, including the following:

• Legal actions and litigation: These may be pursued through either civil or criminal proceedings. In civil matters, a lawsuit is filed against the infringing party seeking injunctions, damages and other remedies. Where serious infringement or counterfeiting is involved, criminal action can be pursued through law enforcement authorities. This may result in fines, imprisonment or other penalties for the infringing parties.
• Alternative dispute resolution (ADR): Either as required under a contract or with the agreement of the involved parties, the dispute can be referred to an appropriate ADR mechanism for resolution.
• Cooperation with relevant authorities: The trademark owner can either request the assistance of or seek to cooperate with:
• • regulatory agencies such as:
  • • the Anti-counterfeit Agency;
    • the Customs Department of the Kenya Revenue Authority; and
    • the Kenya Industrial Property Institute; or
  • international agencies such as the World Intellectual Property Organization for support and coordination of trademark enforcement actions.
• Cease and desist letters: Where applicable, cease and desist letters:
• • may be sent to alleged infringers to formally demand the cessation of infringing activities; and
  • may include a request for compensation or damages.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

In Kenya, the limitation period for bringing a trademark infringement claim is six years from the date on which the cause of action accrued or occurred. This means that a trademark owner has six years from the date on which it becomes aware, or reasonably should have become aware, of the infringement to file a claim.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

Under the Civil Procedure Rules 2010, a plaintiff must send a demand letter to the opposing party before filing a lawsuit. This means that notice of the intention to sue should be provided, unless prior communication with the opposing party would likely harm the plaintiff's interests. If a notice of intention to sue is not issued, the claimant may lose the right to a costs order if the defendant settles the claim upon receiving the summons.

However, there is no requirement for the defendant to respond.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

The procedural requirements include the following:

• Pre-filing investigation:
• • Collect evidence of the alleged infringement (eg, the infringing mark, products, advertising materials and any other relevant documents).
  • Serve a cease-and-desist letter as a warning to the infringer and a precursor to litigation.
• Filing a lawsuit:
• • Jurisdiction: In Kenya, trademark infringement cases are typically filed in the High Court.
  • Pleadings: Draft and file the necessary legal documents, including the statement of claim, which outlines:
  • • the facts of the case;
    • the alleged infringement; and
    • the relief sought.
  • Service of process: Serve the defendant with a copy of the lawsuit and other relevant documents. This formally notifies it of the legal action against it.
  • Filing of defence: The defendant must file a defence, which may include a counterclaim, within a specified timeframe.
• Discovery phase:
• • Information exchange: Both parties exchange relevant information and documents related to the case. This may involve interrogatories and requests for documents.
  • Evidence gathering: Each party gathers and files evidence to support its claims or defences.
• Trial:
• • Court proceedings: The case is presented to the court. Both parties present their arguments, evidence and witnesses.
  • Judgement: The judge will hear the arguments and evidence and render a decision on the case.
• Post-trial proceedings:
• • Appeal: If either party is dissatisfied with the court's decision, it may appeal to a higher court.
  • Enforcement: If the court finds in favour of the trademark owner, it may order the infringer to:
  • • stop using the infringing mark;
    • recall infringing products;
    • pay damages; and/or
    • destroy infringing materials.

The substantive requirements include the following:

• Ownership: The plaintiff must own or have a valid claim to the trademark.
• Valid registration: The plaintiff must prove that the trademark is validly registered in Kenya. However, unregistered marks also benefit from protection against infringement.
• Infringement and likelihood thereof: The plaintiff must demonstrate the alleged infringement of the trademark.
• Likelihood of confusion: The plaintiff must show that there is a likelihood that consumers will be confused, deceived or misled as to the source of the goods or services.
• Damages: The plaintiff may seek damages for the infringement, including:
• • lost profits;
  • injury to reputation; and
  • punitive damages.
• Injunction: The plaintiff may also seek an injunction to stop the defendant from further infringing the trademark.

The trademark infringement complaint must provide sufficient details, in accordance with the Trademarks Act (Cap 506) and relevant procedural rules, to:

• establish a prima facie case; and
• enable the court to understand the nature of the claim.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Yes. Interim remedies are available in trademark litigation in Kenya.

To obtain an interim remedy, a party may file an interim application either:

• before the trial; or
• during the substantive hearing of the infringement claim.

If the matter is urgent, the application can be submitted along with a certificate from an advocate confirming its urgency. Additionally, these remedies can be sought ex parte.

Interim remedies may take the following forms, among others:

• injunctive relief (interim or interlocutory);
• Anton Piller orders (search and seizure orders);
• Mareva injunctions (freezing orders);
• delivery-up orders;
• conservatory orders;
• production orders;
• an order for accounts; and
• a witness summons.

The court has discretion to grant an interim order if the matter is certified urgent pending the hearing and determination of the substantive application.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

In Kenya, a defendant can apply to the court for the plaintiff to provide security for costs pursuant to the Civil Procedure Rules 2010. The courts have a wide discretionary power to order or refuse security for costs. Circumstances in which security for costs or damages might be ordered include the following:

• Impecuniosity: If the party against which costs are sought is financially unstable or unable to pay potential costs, the court may order it to provide security.
• Frivolous or vexatious claims: If the court believes that the claim or defence brought by a party is frivolous or vexatious, it may order that party to provide security for costs to discourage such actions.
• Risk of insolvency: If there is a significant risk that a party might become insolvent or bankrupt during the course of the litigation, the court may order security to protect the other party's interests.
• Genuineness of proceedings: If the court believes that a party is abusing the legal process or engaging in other unbecoming conduct, it may order security as a safeguard against potential abuse.
• Delay or non-compliance: If a party has caused delays in the legal proceedings which have prejudiced the other party or has failed to comply with court orders, the court may order security as a form of penalty or to ensure compliance in the future.
• Foreign plaintiffs or defendants: The court may also order security where there would be difficulties or complexities in enforcing a Kenyan court judgment or order in the country of a non-resident plaintiff or appellant.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

The pre-trial rules under the Civil Procedure Act (Cap 21) and the Civil Procedure Rules 2020 provide that each party may obtain evidence from the opposing party through various methods, including the following:

• Interrogatories: Written questions sent by one party to the other, which must be answered in writing under oath.
• Production of documents: One party can request the other to produce documents that are in its possession or control and relevant to the case.
• Admissions: Requests to admit the truth of any facts or the authenticity of any documents.
• Inspection of property: This allows a party to inspect the physical evidence or property involved in the litigation.

Some documents may be exempt from discovery if:

• they are privileged, such as attorney-client communications; or
• revealing them would breach confidentiality agreements.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

A party can request discovery from a third party by applying to the court for a summons requiring the third party to produce the necessary evidence. Typically, the applicant is responsible for covering the third party's expenses. If the court issues the summons, it will specify:

• the date, time and location for the third party's attendance; and
• whether the third party is expected to give testimony or provide evidence.

The third party can decline to disclose a document if:

• it is covered by other forms of legal privilege – for example, communications between an advocate and his or her clients;
• disclosure would harm national security interests; or
• disclosure could lead to the infringement of a person's right to privacy and confidentiality.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

In Kenya, certain witnesses are protected from being compelled to testify in legal proceedings on account of legal privilege. Certain communications or individuals are protected from compulsion and considered privileged, and thus cannot be disclosed/produced and/or relied upon as evidence in legal proceedings. The types of privilege in Kenya include the following:

• Legal privilege: Communications and information arising from certain relationships (eg, advocate-client, doctor-patient, spousal, priest-penitent) are recognised and protected by law, and may be kept confidential and not disclosed in legal proceedings.
• Parliamentary privilege: Members of Parliament are granted specific privileges and immunities to perform their duties effectively. These privileges include:
• • freedom of speech in Parliament; and
  • immunity from arrest in civil cases during parliamentary sessions.
• Privilege of court: This generally protects judges and magistrates from being compelled to testify on their conduct in court as a judge or magistrate.
• Privilege relating to official records: If an authorised government official swears an oath stating that any unpublished official records should not be disclosed because doing so would harm public service or violate public policy, those records will not be admissible as evidence.
• Privilege of official communication: This prevents a public officer from being compelled to disclose communications made to him or her by any person during the exercise of his or her duty when the public officer believes that the public interest would be harmed by such disclosure.

As for exceptions, there may be situations where privileges are limited or overridden by other legal considerations. Examples include the following:

• Legal privilege can be waived under specific circumstances. This may occur if:
• • the client voluntarily shares information with a third party;
  • there is a legal obligation to disclose certain information; or
  • the communication relates to furthering a crime.
• Additionally, privilege may be waived if the client reveals that a crime has occurred or will occur.
• Parliamentary privilege may be subject to limitations or exceptions outlined in the Constitution or parliamentary rules.
• Executive privilege may be challenged in court if there is a compelling public interest in accessing certain information held by the executive branch.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

The court may, either on its own initiative or upon request from a party, issue an order regarding the following:

• the delivery and response to interrogatories;
• the admission of documents and facts;
• the discovery, inspection and production of documents;
• the presentation of material objects that can be used as evidence; and
• the issuance of summonses for witnesses to testify or produce documents as evidence in court.

The court can issue summonses that require a specific person to appear and either provide testimony or present documents. The documents requested for discovery must be relevant to the case. Relevance is determined according to the pleadings to prevent the discovery process from being misused as a fishing expedition. The discovery process can be managed by either the litigant or the judge, as needed.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

Various types of evidence are permissible in trademark infringement suits, including:

• oral evidence;
• documentary evidence;
• hearsay (with limitation);
• circumstantial evidence;
• expert evidence; and
• survey evidence.

Expert evidence is allowed as long as the expert meets specific qualifications and standards set by the court. Similarly, survey evidence can be admitted if it aligns with certain criteria and standards determined by the court. For both expert evidence and surveys, the court will evaluate their relevance, reliability and credibility before deciding whether to accept them.

Ultimately, the decision to use expert evidence or survey evidence will depend on:

• the strategies of the parties involved;
• the requirements of the case; and
• the discretion of the court.

The court has the power to issue a commission to investigate and report on:

• any matter in dispute;
• the value of any property; or
• the extent of any damage.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

In Kenya, evidence from criminal proceedings can be used in civil proceedings and vice versa, provided that the evidence is relevant and reliable. However, evidence may not be admissible if:

• it was obtained illegally; or
• it is deemed privileged.

In criminal proceedings, the standard of proof required is ‘beyond a reasonable doubt'. In contrast, civil proceedings require proof ‘on the balance of probabilities'. This distinction means that evidence that meets the lower standard in civil cases may not be enough to satisfy the higher standard in criminal cases.

7.4 What are the applicable standards of proof?

In criminal matters, the standard of proof is beyond reasonable doubt. The evidence adduced must be so convincing that there is no doubt in the mind of a reasonable person that the defendant committed the crime.

In civil proceedings, the standard of proof is on a balance of probabilities. The evidence adduced must be of a nature that it is more probable than not that the facts presented are true.

7.5 On whom does the burden of proof rest?

In Kenya, the burden of proof generally rests on the party making the claim or accusation. This will be the prosecution in criminal matters or the claimant/plaintiff in civil matters, respectively.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

The possible defences available in trademark litigation include the following:

• Prior use/priority of registration: The defendant can demonstrate prior use of the trademark before the plaintiff, proving that it acquired rights before the plaintiff. The prior use must be established as:
• • bona fide;
  • honest; and
  • continuous.
• Non-infringement: The defendant can demonstrate that its use of the trademark does not infringe the plaintiff's rights. This may be due to factors such as:
• • insufficient similarity between the marks;
  • a low likelihood of confusion;
  • prior use of the mark; and
  • other considerations.
• Invalidity of the trademark: The defendant may challenge the validity of the plaintiff's trademark registration on grounds such as:
• • lack of distinctiveness;
  • the descriptive nature of the mark; or
  • prior use by others.
• Consent/lawful use: The defendant can demonstrate that the use was authorised by the trademark owner by:
• • licence;
  • assignment; or
  • another contractual arrangement.
• Fair use: The use can be deemed as fair use (eg, for descriptive or comparative purposes) and does not constitute infringement.
• Non-use: The defendant can demonstrate that the plaintiff has not used the trademark for an extended period. If this is more than five years, grounds for invalidation of the trademark will exist.
• Estoppel: The defendant may assert that the plaintiff is estopped from enforcing its trademark rights due to its prior actions or statements.
• Genericness: The defendant may argue that the trademark in question has become generic/watered down and is no longer distinctive.
• Delay or acquiescence: The plaintiff's claim is brought after the expiry of the limitation period.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

Yes. The grounds for a counterclaim for revocation or invalidation include the following:

• Non-use: The mark has not been used in five years and until one month prior to filing of the counterclaim.
• Genericness: The mark has lost its distinctiveness as it is commonly used to refer to a type of product or service as opposed to exclusively identifying the products or services of the trademark owner.
• Wrongful entry in the register: The trademark:
• • was registered through material misrepresentation or fraudulent means or without meeting the registrability requirements; or
  • offends trademark laws.
• Prior-use/priority of registration: The defendant holds prior rights to the trademark through prior use or registration.

The defendant submits a counterclaim as part of its defence in the trademark infringement proceedings. The defendant must present the evidence supporting the counterclaim.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

Yes. The grounds include the following:

• Genericness: If a trademark becomes a common descriptive name for a type of product or service, it may lose its distinctiveness and become unenforceable against the defendant.
• Non-use: If a trademark has not been used for five years, it may be deemed abandoned and lose its enforceability.
• Improper use: If a trademark is used inconsistently with the goods or services to which it relates, or if its registration was misleading regarding its use, this may weaken the trademark's distinctiveness, rendering it unenforceable.
• Fraud or misrepresentation: If a trademark was obtained through fraudulent means or if there is a material misrepresentation in the application process, it may be deemed unenforceable.
• Delay/laches: A trademark may be unenforceable if the trademark owner unreasonably delays in asserting its rights before the expiry of the statutory limitation period.
• Public policy: If enforcing a trademark would contravene public policy or if the trademark is deemed offensive or scandalous, it may be deemed unenforceable.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

The Constitution recognises alternative dispute resolution (ADR) mechanisms as an essential aspect of judicial authority exercised by courts and tribunals. Although ADR is not mandatory, courts encourage parties to consider it. Additionally, parties can request that their case be referred to ADR. If parties are dissatisfied with a court's decision to refuse referral to ADR, they have the right to appeal.

The courts, as outlined in Order 46 of the Civil Procedure Rules 2010, can initiate an ADR process either:

• before scheduling a trial; or
• during the trial itself.

However, the degree to which parties must participate in ADR may vary based on:

• the specifics of the case; and
• the judge's discretion.

In some situations, the participation of the parties is contingent upon their consent to such referrals.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Yes. Parties involved in a dispute can request the court to pause or end the proceedings if they are engaged in settlement discussions. The court usually agrees to these requests in order to encourage the efficient resolution of disputes, avoiding the need for a full trial.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

Yes. The settlement can be established in two ways:

• by recording a consent judgment as a court order; or
• through the execution of a settlement agreement between the parties.

When the terms of the settlement are recorded in court, they become court orders, allowing the court to issue a decree for enforcement.

The settlement of a lawsuit can remain confidential if the parties agree on the terms and simply ask the court to mark the case as settled. However, if the terms are not recorded as a court order, a party may need to file a lawsuit to enforce the settlement agreement by obtaining a judgment. Therefore, it is good practice to ensure that all terms of the agreement have been satisfied before requesting the court to mark the case as settled.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

Legal proceedings in Kenya are generally open to the public. However, there are mechanisms in place that allow parties to seek confidentiality for certain proceedings or related information. Parties may request a confidentiality order where:

• sensitive national security interests are involved; or
• disclosure could harm one of the parties or a witness.

In such cases, the proceedings are held privately, known as ‘in camera'. The court will also provide necessary directions regarding:

• the treatment of court documents; and
• the management of confidentiality arrangements agreed upon by the parties.

Court filings are typically accessible only to the involved parties or their authorised representatives. This restriction is enforced through the secure access mechanisms of the e-filing system portal, where individuals can only enter the portal using their account credentials.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

Generally, an infringement claim is brought in relation to a registered trademark only. Passing-off actions may be instituted by owners of both registered and unregistered trademarks.

To institute a claim for both infringement and passing off in the same action:

• both the registered trademark and the unregistered trademarks owned by the same trademark owner must have been infringed by the same defendant(s); and
• similar facts or circumstances must exist relating to the actions complained of concerning both marks, respectively.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

The main steps in infringement and/or validity proceedings before the High Court are outlined in question 5.4. Trademark validity and infringement are typically handled in separate proceedings. However, if brought together, the courts generally have the authority to determine both validity and infringement in the same suit.

Where validity proceedings are brought before the registrar of trademarks, the key steps include:

• identification of the grounds for invalidity, whether absolute or relative;
• initiation of proceedings by:
• • filing a notice of opposition within 60 days of the trademark's publication in the Kenya Industrial Property Institute Journal; or
  • filing a petition for revocation – this can be filed by any interested party after the trademark has been registered;
• examination by the registrar
• opposition proceedings, if any;
• decision of the registrar; and
• appeal, if any.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

There are no pre-defined timelines for trademark infringement proceedings. The time taken may be determined by:

• the complexity of the matter;
• the number and nature of interlocutory applications filed within the suit;
• the number of parties responding to the application;
• whether an oral hearing will be held or the matter will be dispensed by way of written submissions; and
• the diary of the court.

A similar position arises in invalidity proceedings.

Nonetheless, the Civil Procedure Rules 2010 provide for the fast-tracking of cases that:

• have undisputed facts and legal issues;
• involve relatively few parties; and
• would likely be concluded within 180 days of a pre-trial hearing being conducted.

There is also a category of multi-track cases – that is, cases which:

• have complex facts and legal issues or several parties; and
• would likely be concluded within 240 days of a pre-trial hearing being conducted.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

Yes. Kenyan court decisions can be enforced outside of Kenya, but this is subject to the rules governing the recognition and enforcement of foreign judgments in the relevant jurisdiction. The acceptance of a Kenyan judgment may differ from country to country and is determined by:

• international treaties;
• bilateral agreements; and
• the domestic laws of the country in which enforcement is being sought.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

Legal precedent does influence the judiciary in Kenya:

• The decisions of higher courts bind the lower courts; and
• The decisions of lower or equivalent courts, or courts in other common law jurisdictions, may be considered persuasive but are not binding.

Higher courts, such as the Court of Appeal or Supreme Court, have the authority to depart from their previous decisions if there is a compelling reason to do so.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

In Kenya, trademark owners have several remedies available to them in case of infringement, including:

• damages;
• injunctions (whether permanent or temporary);
• accounts of profits;
• orders for delivery up or destruction of the offending goods; and
• the costs of the suit.

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Yes, punitive/exemplary and aggravated damages can exceptionally be awarded in appropriate cases.

Punitive damages apply:

• where they are specified in legislation;
• in case of oppressive, arbitrary or unconstitutional actions by government officials; or
• where the defendant's behaviour is intended to generate a profit that significantly exceeds the compensation owed to the plaintiff.

Aggravated damages may be applicable to punish the wilful, malicious, intentional or egregious conduct of the defendant.

In deciding the quantum of damages, the court will evaluate:

• the severity of the misconduct;
• the intentionality of the conduct;
• the financial status of the defendant;
• applicable precedents; and
• the effectiveness of other available remedies.

11.3 What factors will the courts consider when deciding on the quantum of damages?

The quantum of general damages awarded largely rests with the court's discretion. However, several factors guide the court in determining the quantum, including:

• the nature and severity of the loss or injury suffered;
• mitigation statements and efforts made;
• precedents and legal principles on damages in similar matters;
• the nature and sufficiency of evidence adduced in support of the case;
• elements of contributory negligence;
• any anticipated future losses;
• equitable considerations;
• non-pecuniary losses suffered; and
• the adequacy and availability of other remedies.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Parties generally have a right of appeal against the decision of the first-instance court or body.

The grounds for appeal are limited to:

• the discovery of new and important evidence that was not within the knowledge of the applicant at the time when the order was made;
• mistake or error apparent from the record; and
• the need for clarification.

The levels of appeal available are as follows:

• Decisions of the registrar of trademarks may be appealed to the High Court.
• Leave of court is not required to appeal a judgment before the Court of Appeal. However, leave of the court is required to lodge an appeal against interim rulings of the High Court to the Court of Appeal.
• The following cases may be appealed to the Supreme Court:
• • any case involving the interpretation or application of the Constitution; and
  • any other case in which the Court of Appeal or the Supreme Court certifies that a matter of general public importance is involved.

Further, most courts have the power to review their own decisions or judgments. However, where the option of review of a decision is sought, an appeal cannot be filed against the same decision.

12.2 What is the average time for each level of appeal in your jurisdiction?

As is the case in the court of first instance, there are no pre-defined timelines for the determination of appeals. The duration may depend on various factors, including:

• the complexity of the case;
• the workload of the courts; and
• procedural requirements.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

Litigants in Kenya can incur various costs and fees, including:

• court filing fees;
• legal fees;
• expert witness costs;
• reasonable disbursements; and
• other miscellaneous expenses.

The general rule is that a successful party in litigation is awarded costs that can be recovered from the losing party through available legal mechanisms.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Contingency fees are prohibited in Kenya.

However, there are alternative fee arrangements that may be permitted in agreements between attorneys and their clients, provided that they comply with Section 45(1) of the Advocates Act (Cap 16).

13.3 Is third-party litigation funding permitted in your jurisdiction?

Litigation funding is prohibited.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

In Kenya, unregistered can be protected in two ways:

• under the tort of passing off, which protects the goodwill and reputation associated with an unregistered trademark from misappropriation or unfair competition by another party; and
• against infringement for ‘well-known' trademarks under Sections 5 and 15A of the Trademarks Act (Cap 506). This allows unregistered trademarks to share some of the same benefits as registered trademarks.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

Generally, the scenarios under which unregistered foreign trademarks may be enforced include the following:

• Passing off: An unregistered trademark owner may take legal action against passing off if it can demonstrate that its foreign mark has acquired goodwill and reputation in Kenya.
• Common law rights: In Kenya, common law rights may apply to unregistered trademarks that have:
• • been used extensively in commerce; and
  • gained recognition among consumers in the relevant market.
• Common law rights typically arise through use rather than registration.
• Well-known trademarks: Under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, well-known trademarks enjoy protection even without registration in member countries. Kenya is a member of both.
• Anti-counterfeiting laws: These may protect unregistered trademarks against counterfeit goods.
• Customs measures: The Customs Department may detain and seize goods suspected of infringing trademarks, whether registered or unregistered:
• • based on the rights holder's request; or
  • on their own initiative.
• Commercial agreements: Sometimes, contractual agreements between parties may include provisions for the protection and enforcement of unregistered trademarks, especially in the case of licensing or distribution agreements.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

Kenya's trademark litigation landscape has evolved significantly. Some notable aspects include the following:

• Online trademark infringement: The rise of e-commerce in Kenya has led to challenges with online trademark infringement. Courts are adapting traditional trademark laws to address issues such as cybersquatting and social media violations, highlighting the need for innovative legal strategies to protect trademarks in the digital space.
• Enforcement actions: Kenya has made remarkable progress in addressing counterfeiting, attributed to the dedicated initiatives of:
• • the Anti-counterfeit Authority (ACA) through the Anti-counterfeit (Recordation) Regulations 2021; and
  • the Kenya Revenue Authority.
• These regulations mandate that all rights holders importing goods into Kenya record their rights with the ACA. Recordation aids in identifying and intercepting counterfeit products at entry points, bolstering the enforcement of IP rights. Their commitment is further evident in the escalation of targeted raids and the prosecution of offenders.
• Evidentiary standards in infringement proceedings: The High Court has clarified the evidentiary standards in trademark infringement cases, stating that trademark owners must provide strong evidence linking the alleged infringer to the infringement. Mere claims of ownership or allegations are insufficient; a clear connection must be established to obtain injunctions.
• Distinctiveness requirement for 3D marks: The Kenya Industrial Property Institute has raised the standards for three-dimensional (3D) trademarks. Applicants must prove that their 3D mark either is inherently distinctive or has gained distinctiveness through significant use in the Kenyan market to indicate the product's origin clearly.
• Protection of unregistered marks: The Kenyan courts recognise that unregistered trademarks can be protected if prior use in the country is proven. In Fibrelink Limited v Star Television Production, the High Court upheld an opposition to a trademark application based on the opponent's prior use of a similar mark, despite it being unregistered and not well known in Kenya. This highlights the importance of prior use in trademark disputes.
• Challenges in enforcement: Despite the efforts of the Kenyan government to strengthen IP rights protection, enforcement remains a challenge. Counterfeiting and trademark infringement are still prevalent in the country.

In the coming 12 months, we are likely to see impactful changes in the trademark litigation landscape in Kenya, particularly with the introduction of new legislative reforms. These reforms are expected to:

• influence the procedures for trademark registration;
• enhance enforcement mechanisms;
• establish stricter penalties for infringement; and
• improve the overall ease of doing business concerning trademarks.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Recommendations include the following:

• Consult experienced IP lawyers in Kenya who specialise in trademark law for personalised advice and guidance throughout the legal process.
• Evaluate the strength of your trademark and any opposition to it to determine the best course of action.
• Collect evidence of your trademark ownership and use, including:
• • registration certificates;
  • usage documents;
  • marketing materials; and
  • related correspondence.
• Consider settling with the opposing party, as this can resolve trademark disputes more quickly and cost effectively while preserving business relationships.
• If litigation is necessary, work with your legal team to build a strong case by:
• • identifying weaknesses in the opposing arguments; and
  • presenting compelling evidence.
• Stay updated on changes in Kenyan trademark law that may impact your case to keep your legal strategy effective.

Potential pitfalls include:

• neglecting to conduct thorough due diligence to avoid infringement claims and ensure that your chosen mark is available and registrable;
• neglecting to monitor your trademark, which can result in lost rights and a weaker position in litigation;
• ignoring cease and desist letters, which can escalate disputes and lead to litigation;
• failing to maintain documentation of trademark ownership and use, which can weaken your legal defence; and
• focusing exclusively on litigation, without exploring mediation or arbitration, which can prolong disputes and raise legal costs unnecessarily.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.