Westgate mall owner takes on Japanese firm in trademark row

Westgate Mall owner, Sony Holdings, is locked in a protracted legal battle with Japanese electronics giant Sony Corporation that is expected to define the boundaries of Kenya’s trademarks law.

The legal tussle before the Court of Appeal began three years ago when Sony Holdings Limited, a real estate firm owned by Alex Trachtenberg and Vishiali Madan, moved to court seeking orders compelling the Registrar of Trademarks to grant it ownership of the name Sony.

But High Court judge Mohammed Warsame threw out Sony Holdings’ suit forcing the Kenyan property developer to seek redress in the Appeal Court.

The battle began in earnest when the Registrar of Trademarks advertised Westgate owner’s proposed trademark in the Industrial Property Journal in May 2011 – the final stage of the copyright registration process.

Sony Corporation filed its opposition in January 2012, 240 days after the advertisement, which Sony Holdings argues was long past the reasonable time provided for the filing of such objections.

The trademarks regulator however informed Sony Holdings that the Japanese electronics manufacturer had been granted additional time to file a notice of opposition prompting the Kenyan firm to allege discriminatory action by the Registrar of Trademarks.

Sony Holdings claimed that the copyrights regulator failed to respond to its letter querying the decision to accept the Japanese firm’s filings long after the expiry of the grace period, forcing him to seek redress in court.

The Westgate owner argued that the notice of opposition could only be filed 60 days after the advertisement but the judge ruled that there was no provision in the law setting a time limit for the filing of such opposition.

Sony Holdings argues before the Appeal Court that Justice Warsame was relatively one-sided in considering the material before him and on the basis of which he made a final determination.

The Westgate Mall owner says the judge ignored some of its final arguments regarding alleged irregular conduct of business at the trademarks registration office and discrimination it was subjected to at the same office.

“The judge failed to appreciate that Sony Corporation was not opposing the registration of Sony Holdings but the registration of trademarks of some other legal person who, without any reason or justification at all, was never enjoined in the High Court suit,” says Manasses Mwangi, the lawyer representing Sony Holdings.

The property developer argues that Justice Warsame was wrong in upholding that the regulator was right in extending the time for the Japanese firm to file opposition to the registration of the trademark.

“The judge misdirected himself by incorrectly finding that the time within which opposition proceedings should be commenced was not expressly provided for in the Trademarks Act, while Sony Holdings clearly submitted that such time was provided for under the Act as being 60 days,” said Sony Holdings in its Court of Appeal papers.

The Westgate owner says that in ruling that the regulator could grant extensions for up to 90 days, the judge usurped powers that are vested in another institution.

“The judge ventured into exercising powers solely preserved for Parliament, to amend the Trademarks Act, in clear disregard of the Constitution.” 

Sony Holdings is also challenging the judge’s view that there was no legitimate expectation from Sony Holdings to have its trademark registered after the Industrial Property Journal advertisement.

Justice Warsame argued that the registration was not a right held by the applicant, hence the firm could not claim to have been guaranteed of the same.

“The fact that the trademarks had been advertised did not necessarily mean that they would as of right be registered. In fact, there was no representation to the applicant that these marks would definitely be registered once the advertisement in the journal had been done.

“Even if the advertisement was a step towards the registration of the marks, I find there was no legitimate expectation that the marks would be registered because the applicant had been previously informed that there was a similar mark that had been undergoing registration,” said Justice Warsame.

Sony Holdings however says that having satisfied all the requirements prior to the registration, an expectation of registration was automatic, a fact that Justice Warsame had ignored in his decision. 

Sony Holding now wants the Court of Appeal to quash the High Court judge’s decision and issue orders compelling the regulator to register its trademark. It also wants the regulator and Sony Corporation to bear the costs it has incurred pursuing the matter in both courts.

The suit has put on ice copyright applications before the regulator pending the filing of notices of opposition.

Hearing before the regulator is meant to establish whether there is merit in any opposition to the trademark registration, and is set to start next month.

Sony Holding was thrust into the public limelight during the City Hall-led rapid business recovery hearings that followed the September 20, 2014 deadly terrorist attack at Westgate Mall in which 67 people died.