Westgate owner in court exchange over ‘Sony’ name

Sony Holdings, the owner of Westgate shopping mall, has asked the Court of Appeal to stop the registrar of trademarks from allowing global electronics giant Sony Corporation of Japan from challenging the registration of its name as a trademark in Kenya.

In a hearing at the appellate court on Monday, the firm which is incorporated locally as a property management company argues that the High Court acted beyond its powers when it allowed the Japanese firm to challenge the local registration of its trademark 270 days after it had been advertised in the industrial property journal.

The Westgate owner argues that allowing the electronics company to challenge its trademark after expiry of the time allowed by law amounted to “amending” the Trademarks Act.

The Japanese firm, through lawyer Kiragu Kimani, has however held that the Registrar has the discretion to extend time to any party wishing to challenge a registration, and that ruling against it and the Registrar would be opening the door for the global company to lodge a suit to protect its trademark.

Advocates Manasses Mwangi and Nicholas Ngumbi appearing for Sony Holdings argued that Justice Mohammed Warsame misinterpreted the law when he delivered the judgment in November 2012, in which he said that the law allowed the registrar to extend time to any party that wants to oppose a particular mark registration.

“The court didn’t have power to amend the Trademarks Act as it did. Time extension only applies to time periods not specified and can’t exceed 90 days. Sony Holdings’ legitimate expectation has been violated,” they argued.

Sony Holdings had sued Sony Corporation and the trademarks registrar after its attempt to register its name as a trademark was opposed by the Japanese electronics maker.

READ: Westgate mall owner takes on Japanese firm in trademark row

It however lost the suit in the High Court, and now wants the Court of Appeal to reverse the lower court’s decision.

Sony Holdings’ advocates added that the registrar had not explained to the court why Sony Corporation’s challenge was allowed 270 days after the advertisement in the industrial property journal.

Sony Corporation argues that it has registered its trademark both in Kenya and around the world, and wants the property manager stopped from using the name “Sony” in its trademark.

“Ruling against the registrar will be interfering with the office’s discretion. If the Sony Holdings trademarks are registered all we are doing is opening the door for Sony Corporation to also lodge a suit,” said Mr Kimani.

The Registrar defended its decision to accept the notice of opposition, arguing that the law doesn’t specify that the trademarks must be done immediately after the lapse of the 60 days provided for any opposition.

Lawyer B M Musau told the appellate court judges that any aggrieved party could apply for time extension to oppose a particular registration, and the Registrar would consider the application.

He added that Sony Holdings should have presented all its arguments in a response to the Japanese firm’s notice of opposition instead of taking the battle to the court.

“The registrar invited Sony Holdings to file a counter statement within 42 days of being served with the notice of opposition. All arguments could have been heard by the registrar. Dispute- resolution mechanisms should be exhausted before going to court,” Mr Musau said.

Appeal Court judges Erastus Githinji, John Mwera and William Ouko will deliver their judgment on February 27, 2015.