Section 25 of Trade Marks Act CAP 506: Powers of, and restrictions on, assignment and transmission

(1) A registered trade mark is assignable and transmissible either in connection with the goodwill of a business or not.
(2) A registered trade mark is assignable and transmissible in respect of either all the goods or all the services in respect of which it is registered or of some only of those goods or services.
(3) The provisions of subsections (1) and (2) shall have the effect of an unregistered trade mark as they have effect in the case of a registered trade mark if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark was assigned or transmitted.
(4) Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which as a result of an assignment or transmission there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods or services to be performed, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or services to be performed and of the trade marks, the use of the trade marks in exercise of those rights would be, or have been, likely to deceive or cause confusion:
Provided that, where a trade mark is or has been assigned or transmitted in such a case, the assignment or transmission shall not be deemed to be, or to have been, invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, or were, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in or services to be performed, within Kenya (otherwise than for export therefrom) or in relation to goods to be exported to the same market outside Kenya.
(5) The proprietor of a registered trade mark who proposes to assign it in respect of any goods or services in respect of which it is registered may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances, and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services and of the trade marks referred to in the case, the proposed assignment of the first-mentioned trade mark would or would not be invalid under subsection (4), and a certificate so issued shall, subject to the provisions of this section as to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under that subsection of the assignment in so far as that validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 28 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.
(6) Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not, on or after the appointed day, be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the circumstances subsist, whether under the common law or by registration, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold or otherwise traded in or services to be performed, in a place or places in Kenya and an exclusive right in another of those persons to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in or services to be performed, in another place or other places in Kenya:
Provided that, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or of a person who claims that a trade mark has been transmitted to him or to a predecessor in title of his on or after the appointed day, in any such case, the Registrar, if he is satisfied that in all the circumstances the use of the trade marks in exercise of those rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this subsection or under subsection (4), so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 28 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of transmission, was made before that date.
(7) Where an assignment in respect of any goods of a trade mark that is at the time of the assignment used in a business in those goods is made, on or after the appointed day, otherwise than in connexion with the goodwill of that business, the assignment shall not take effect until the following requirements have been satisfied, that is to say, the assignee must, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, apply to him for directions with respect to the advertisement of the assignment, and must advertise it in such form and manner and within such period as the Registrar may direct.
(8) Any decision of the Registrar under this section shall be subject to appeal to the court.

Disclaimer: This document is not to be taken as legal advice.

🧑‍⚖️ Manage Your Law Firm Better with SheriaPlex LPMS

Our powerful Legal Practice Management System is designed specifically for law firms in Kenya. Track cases, manage clients, generate invoices, handle tasks, and more — all in one secure, cloud-based platform.

📁 Case & Matter Management
💼 Client Profiles & Billing
🧾 Invoicing & Payment Tracking
📊 Analytics Dashboard
🔒 Secure & Multi-User Access

Learn More

Cited By:

More Sections

Section 27 - Power of registered proprietor to assign and give receipts

Subject to the provisions of this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any...

Section 28 - Registration of assignments and transmissions

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of...

Section 29 - Removal from register and imposition of limitations on ground of non-use

(1) Subject to the provisions of section 30, a registered trade mark may be taken off the register in respect of any of the goods or services in respect of which it is registered on application by any...

Section 30 - Defensive registration of well-known trade marks

(1) Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used...

Section 31 - Registered users

(1) Subject to the provisions of this section, a person other than the proprietor of a trade mark may be registered as a licensee thereof in respect of all or any of the goods in respect of which it...

Section 32 - Proposed use of trade mark by corporation to be constituted, etc.

(1) No application for the registration of a trade mark in respect of any goods or services to be performed shall be refused, nor shall permission for such registration be withheld, on the ground only...

Section 33 - Use of one of associated or substantially identical trade marks equivalent to use of another

(1) Where under this Act use of a registered trade mark is required to be proved for any purpose, the court or the Registrar may, if and so far as the court or the Registrar thinks right, accept use...

Section 34 - Use of trade mark for export trade

The application in Kenya of a trade mark to goods to be exported from Kenya, and any other act done in Kenya in relation to goods to be so exported or services to be performed outside which, if done...

Section 35 - General power to rectify entries in register

(1) Any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the...

Section 36 - Power to expunge or vary registration for breach of condition

On application by any person aggrieved to the court, or, at the option of the applicant and subject to the provisions of section 53, to the Registrar, or on application by the Registrar to the court,...

Section 36A - Surrender of a registered trade mark

(1) A proprietor may surrender a registered trade mark in respect of some or all of the goods or services for which it is registered. (2) The Cabinet Secretary may make rules for the surrender of a...

Section 36B - Effect of Acquiescence

(1) A proprietor of an earlier trade mark or any other earlier right, who has acquiesced for a continuous period of five years in the use of a registered trade mark in Kenya, being aware of that use,...

Section 37 - Correction of register

(1) The Registrar may, on request made in the prescribed manner by the registered proprietor— (a) correct any error in the name, address or description of the registered proprietor of a trade...

Section 38 - Alteration of registered trade mark

(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identify...

Section 39 - Adaptation of entries in register to amended or substituted classification of goods

(1) The Cabinet Secretary may from time to time make such rules, prescribe such forms and generally do such things as he thinks expedient, for empowering the Registrar to amend the register, whether...

Section 40 - Certification trade marks

(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other...

Section 40A - Collective trade marks

(1) A mark capable of distinguishing, in the course of trade, the goods or services of persons who are members of an association, from goods or services of persons who are not members of such...

Section 40B - Marks registered under the Banjul Protocol and the Madrid Convention and Protocol

In this Part— "International Bureau" means the International Bureau of the World Intellectual Property Organization, established by the convention signed at Stockholm on the 14th July,...

Section 40C - Rules regarding regional and international applications

(1) The Cabinet Secretary may, in rules, make appropriate provisions to give effect, in Kenya, to the provisions of the Banjul Protocol and the Madrid Agreement and the Madrid Protocol. (2) The rules...

Section 40D - Applications for registration of marks under the Banjul Protocol

(1) A trade mark in respect of which Kenya is a designated state, registered by ARIPO by virtue of the Banjul Protocol, shall have the same effect and enjoy the same protection in Kenya, as a trade...

Section 41 - Power of Cabinet Secretary to make rules

The Cabinet Secretary may make such rules, prescribe such forms and generally do such things as he thinks as he thinks expedient— (a) for regulating the practice under this Act, including the service...

Section 42 - Fees

There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Cabinet Secretary.

Section 43 - Preliminary advice by Registrar as to distinctiveness

(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima...

Section 44 - Hearing before exercise of Registrar’s discretion

Where any discretionary or other power is given to the Registrar by this Act or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of...

Section 45 - Power of Registrar to award costs

(1) In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they...

Section 46 - Registration to be prima facie evidence of validity

In all legal proceedings relating to a registered trade mark (including applications under section 35), the fact that a person is registered as proprietor of the trade mark shall be prima facie...

Section 47 - Certificate of validity

In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the court may certify to...

Section 48 - Costs of Registrar in proceedings before court, and payment of costs by Registrar

In all proceedings before the court under this Act, the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the...

Section 49 - Trade usage, etc., to be considered

In any action or proceeding relating to a trade mark or trade name, the court or the Registrar shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or...

Section 50 - Registrar’s appearance in proceedings involving rectification

(1) In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed...

Section 51 - Court’s power to review Registrar’s decision

The court, in dealing with any question of the rectification of the register (including all applications under the provisions of section 35), shall have power to review any decision of the Registrar...

Section 52 - Discretion of court in appeals

In any appeal from a decision of the Registrar to the court under this Act, the court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.

Section 53 - Procedure in cases of option to apply to court or Registrar

Where under any of the foregoing provisions of this Act an applicant has an option to make an application either to the court or to the Registrar— (a) if an action concerning in the trade mark in...

Section 54 - Mode of giving evidence

(1) In any proceeding under this Act before the Registrar, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which the Registrar...

Section 54A - Nice Agreement receivable in evidence

The Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Trade Marks of 15 June, 1957 and all revisions thereof together with the...

Section 57 - Falsification of entries in register

If any person makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or...

Section 58 - Fine for falsely representing a trade mark as registered

(1) Any person who makes a representation— (a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or (b) with respect to a part of a...

Section 58A - Interpretation of terms in Part XI

In this Part— "apply to," in relation to goods, means— (a) to emboss, impress, engrave, etch, stamp, write, photocopy or otherwise cause to be applied to or printed upon; or (b) to weave or...

Section 58B - Application

(1) A trade mark is applied to goods if— (a) it is applied to the goods themselves; or (b) it is applied to a covering on, in or attached to which the goods are sold; or (c) the goods are placed in...

Section 58C - Forgery of registered trade mark

For the purpose of this Part, a person forges a registered trade mark if— (a) without the consent of the proprietor of the registered trade mark or the authority of this Act, he makes that trade mark...

Section 58D - Prohibition of forgery of registered trade mark

(1) Subject to subsection (2), any person who— (a) forges a registered trade mark; or (b) falsely applies a registered trade mark to goods or in relation to services; or (c) makes a die, block,...

Section 58E - Prohibition of sale or importation of goods or performance of services with forged registered trade mark

(1) Subject to the provisions of subsection (2), any person who sells or imports any goods or performs any services to which— (a) a forged registered trade mark is falsely applied; or (b) a...

Section 58F - Aiding and abetting offence

Any person who within Kenya procures, counsels, aids, abets or is accessory to the commission outside Kenya of an offence which, if committed within Kenya would be an offence under this Part, is...

Section 58G - Evidence

(1) Any invoice or other document submitted or used by an importer or any other person in connection with the importation of goods in respect of which a prosecution is brought under this Part may be...

Section 58H - Forfeiture of goods

(1) On conviction of any person for an offence under this Part, the court may, in addition to any sentence passed, declare any goods in respect of or by means of which the offence was committed to be...

Section 59 - Restraint of registration and use of Olympic symbol

(1) Subject to an authorisation by or on behalf of the International Olympic Committee, no sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic...

Section 60 - Change of form of trade connexion not to be deemed to cause deception

The use of a registered trade mark in relation to goods between which and the person using it any form of connexion in the course of trade subsists shall not be deemed to be likely to cause deception...

Section 61 - Jointly owned trade marks

(1) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except— (a) on...

Section 62 - Trusts and equities

(1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar. (2) Subject to the provisions of...

Section 63 - Recognition of agents

(1) Where by this Act any act has to be done by or to any person in connexion with a trade mark or proposed trade mark or any procedure relating thereto, the act may, under and in accordance with the...

Back to Kenya Acts