Sony trade mark decision not a threat to well known brands

The High Court of Kenya on May 29, 2018 delivered a judgment that sent shockwaves among owners of well-known brands in the country.

The judgment was delivered in a case where Japan’s Sony Corporation had sued a Kenyan firm Sony Holdings Limited [2018] over the use of the brand name in Kenya.

Media reports of the decision gave the impression that well-known brands are under threat in Kenya.

It must be remembered that the latest judgment came hot on the heels of reports that Barclays Plc had been temporarily barred from changing its name to ABSA in the wake of a suit filed by a local company that had registered the trade mark in Kenya prior to ABSA’s acquisition of Barclays.

The first shot of the brand name war had, however, been fired by another High Court judgment in Fibrelink Limited v Star Television Productions Ltd in which the court held that the owner of an unregistered trade mark was entitled to block registration of the mark by another party.

That judgment was intriguing because Kenya is a ‘first to file’ country, which means that registration of trade marks is done on a ‘first come first served’ basis.

The owner of an unregistered trade mark only enjoys common law rights that do not constitute a bar to the registration of the mark by others. This case has, ironically, become an important teaching aid at international IP conferences.

In the latest case, Sony Corporation, Japan’s global electronics giant, claimed that it had registered and used the SONY brand for over 50 years in over 200 countries, including Kenya in respect of various goods and services, including classes 9 (electronics), 35 (advertising/business), 36 (real estate), 37(construction), 38 (telecommunications), 39 (transport), 40 (treatment of materials), 41 (education, entertainment, sports) and 42 (scientific and technological services).

On the other hand, Sony Holdings Limited, the proprietor of the Westgate Mall, had applied to register “SONY HOLDINGS” in classes 12 (vehicles), 16(printed matter), 25 (clothing), 35, 36, 37, 39 and 45 (personal/social services).

Sony Corporation opposed the applications on grounds that it was the exclusive owner of the ‘SONY’ brand, which is also a well-known trade mark in Kenya. It argued that registration of the opposed mark would result in the same brand being used by different parties leading to confusion in the market.

The law allows the registration of identical or similar marks by different proprietors provided they relate to distinctly different goods or services to remove the likelihood of confusion.

The Assistant Registrar had, in fact, found that the marks were similar, there was an overlap in the goods/services (classes 35, 36, 37 and 39) and that there was bound to be actual or likelihood of confusion if the marks were to co-exist.

She, nonetheless, proceeded to dismiss Sony Corporation’s opposition and allowed Sony Holdings’ mark to proceed to registration in all the classes, including those in which Sony Corporation’s marks were already registered. Sony Corporation then appealed to the High Court.

In what at first glance appears to be a tenuous judgment (which might explain its misinterpretation by the media), the High Court, by and large, dismissed Sony Corporation’s case on various grounds.

First, the court rightly expressed its profound reluctance to interfere with the Registrar’s ruling, reiterating the well-established principle that the Registrar is a specialised quasi-judicial tribunal manned by officers, who are well versed in the technical matters falling under their jurisdiction.

As such, the court would only disturb the Registrar’s ruling if it is so manifestly unreasonable that no reasonable tribunal would have arrived at such a decision.

Secondly, the court agreed with the Registrar that owing to the insufficient evidence filed by Sony Corporation, there was no basis upon which the Registrar could take judicial notice of the fact that SONY was a well-known trade mark in Kenya.

Sony Corporation had furnished evidence in the nature of numerous sponsorships for sports and other global events (including a FIFA partnership), which were accessible to millions of Kenyans through free to air television.

The Registrar, however, ruled that Sony should have adduced further evidence to prove that indeed a large number of Kenyans had accessed those events on television.

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Thirdly, the court agreed with the Registrar that since Sony Corporation did not ‘invite’ the Registrar to take judicial notice of the notoriety of its mark in Kenya, there was no basis upon which the Registrar could invoke the doctrine.

Finally, the court agreed with the Registrar that Sony Corporation had failed to prove its global ownership of the marks by not attaching copies of the certificates of registration from the various countries where it claimed to have registered the marks.

The judgment, while substantially correct in its conclusion, may have inadvertently sent the wrong signals by agreeing with the Registrar on some controversial points of law.

Fortunately, the court in conclusion disagreed with the Registrar on the most fundamental issue, which has been overlooked by the media, namely, that the Registrar was wrong in allowing the registration of Sony Holding’s mark in the classes already registered by Sony Corporation.

The upshot of the judgment, therefore, is that Sony Holdings has no right to use the SONY brand in respect of any of the goods/services covered by Sony Corporation’s registrations.