26
CAP. 506
Trade Marks
[Rev. 2009
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,