On 12th of March this year, Kenya, a member of the Madrid Union, having signed and acceded to both the Madrid Agreement (here http://www.wipo.int/wipolex/en/wipo_treaties/text.jsp?file_id=283530) and the Protocol to the Agreement (here http://www.wipo.int/wipolex/en/wipo_treaties/text.jsp?file_id=283484) concerning the international registration of trade marks via the WIPO administered ‘Madrid System’, notified WIPO (aka the International Bureau) of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. See the notification here http://www.wipo.int/treaties/en/notifications/madridp-gp/treaty_madridp_gp_202.html.
The Madrid Protocol provides that any of its members may declare that in connection with an international registration designating it, it wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, a fee (called “the individual fee”) whose amount shall be indicated in the declaration. This amount must not be higher than what an applicant would have paid if he had gone through the national system of registering the trade mark as this would in essence defeat the cost savings such applicant would have by going through the Madrid system.
This basically means that three months from the date of the notification, ie 12th June 2014, Kenya shall be entitled to receive these ‘individual fees’ from WIPO in respect of all Madrid system applications designating it. Individual fees also apply to renewal fees.
Since Kenya’s accession to the Madrid Agreement and the Protocol relating to the Agreement to date, Kenya has been designated in 22,453 international registrations, with about 600 of these international registrations being in respect of 2013.
Kenya’s notification does not state what the individual fee to be paid for registration or for a renewal is, but this must be less than US$ 410 which it currently costs a foreign person to register a trade mark in one class in Kenya. I am therefore not sure whether the consequence of the notification will be that Kenya will receive in total less or more fees, given the fact that it will no longer share in the complimentary and the supplementary fees.
The consequence of this notification is that foreigners seeking to protect their trade marks in Kenya via the Madrid system will pay a bit more for designating Kenya in the international registration, but in my view, it will still be cheaper and more efficient to go via the Madrid System than to file a trade mark nationally particularly where the trade mark owner seeks to protect his trade mark in a over five jurisdictions/countries.