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Sony renews trade name battle with Westgate Mall owners

The industrial property rights agency has approved registration of the Westgate Mall owners’ Sony Holdings brand name as a trademark. PHOTO | FILE
The industrial property rights agency has approved registration of the Westgate Mall owners’ Sony Holdings brand name as a trademark. PHOTO | FILE 

Japanese electronics manufacturer Sony Corporation has renewed a protracted trade name battle against owners of the Westgate Mall in the High Court as it seeks to retain exclusive rights to the “Sony” tag.

The Japanese electronics giant has filed a fresh civil suit seeking to reverse a decision by the industrial property rights agency allowing for the registration of the Westgate Mall owners’ Sony Holdings brand name as a trademark.

The Registrar of Trademarks in June last year ruled that Sony Corporation had not provided enough evidence to show the degree of knowledge of its trademark among Kenyan electronics users.

The registrar also argued that property developer, Sony Holdings, had since its inception carried out honest real estate business hence could not be said to be using the Japanese company’s name to deceive the public.

But Japan’s Sony insists that the registrar ignored crucial evidence it provided in support of its opposition to the recording of the Sony Holdings trademark.

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“The registrar erred in fact and in not finding that the respondent’s ‘Sony Holdings’ mark was so identical and similar to the “Sony” mark and was likely to deceive or cause confusion between the appellant’s and the respondent’s goods and services. The registrar did not consider evidence of Sony Corporation provided in its statutory declarations nor did she deal with it,” Sony Corporation says.

The four-year old legal battle began when Sony Holdings filed a suit in 2012 seeking to stop the registrar from entertaining the suit. Sony Holdings argued that the Japanese electronics maker had filed its opposition before the registrar outside the 60 days provided for by law.

But Court of Appeal judges Erastus Githinji, John Mwera and William Ouko in March last year ruled that the Registrar of Trademarks was right in declining the Westgate Mall owners’ request.

In response, the registrar told the court that Sony Corporation had successfully requested for a time extension, which the judges held was within the regulator’s power to grant. The regulator gave the Japanese firm 210 days to oppose the application.

Sony on its part insisted that it had successfully requested an extension of time to object to the registration of Sony Holdings as a trademark.

In the fresh suit, Sony Corporation has only enjoined Sony Holdings as a respondent. The registrar also faulted Sony Corporation for not providing evidence as relates to other companies that have successfully registered their trademarks which include the name Sony in them.

Sony Holdings has claimed in an application in the fresh suit that the Japanese electronics maker has intentionally omitted crucial documents that were used to argue the dispute before the registrar.

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