“Like the High Court, we are satisfied that the Registrar judicially and fairly exercised his discretion to extend time. He properly directed himself on the substance of the notice of oppsition so that the matter in controversy may be heard and determined with the benefit of evidence. The alternative, suggested by the appellant, namely to terminate the opposition proceedings on a technical procedural point, would be ineffectual, as the registration of the appellant’s trade marks would open new front of challenge and dispute between the same parties, on essentially the same issue.
We find no merit in this appeal. It is dismissed with costs.” – Githinji, Mwera & Ouko, JJ.A in the Judgment of the Court in Sony Holdings Ltd v Registrar of Trade Marks & another  eKLR.
This blogger has come across the recently reported judgment of the Court of Appeal in the case of Sony Holdings Ltd v Registrar of Trade Marks & another  eKLR. As previously discussed here, the so-called Sony case was filed in the High Court to challenge whether the Registrar of Trade Marks acted within his powers in extending time within which a notice of opposition to the registration of two trade marks could be lodged. Disatisfied with the decision of the High Court on this matter, Sony Holdings appealed to the Court of Appeal which has now delivered the present judgment. In its judgment, the appellate court upheld the decision of the High Court and found that the Registrar of Trade Marks had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.
A copy of the judgment is available here.
In advancing the argument of legitimate expectation, Sony Holdings unsuccessfully sought to have the Court of Appeal stretch this doctrine to hold that “Law is a promise, and a person legitimately expects to enjoy the guarantees of the law as and when s/he fulfills his/her legal obligation”. More fundamentally, Sony Holdings failed to convince the court that the discretion of the Registrar of Trademarks is not unfettered and that it is in fact circumscribed. On this part, the court rightly found as follows:
“While we have no doubt that under Rule 46 the time within which a notice of opposition may be given is sixty days from the date of advertisement, we hold the view that Rule 102, providing for the Registrar’s general power for enlargement of time under the Act, gives him unfettered powers. He can extend the time for doing any act under the Rules on such conditions as he may himself specify.
Although sub-rules (2) and (3) respectively provide that he may not extend time expressly provided in the Act, except those prescribed under section 25 (6) and (7) or extend a time limit for a period in excess of ninety (90) days, the use of the word “may” in both sub-sections does suggest that for good reason the Registrar has discretionary powers to extend time beyond sixty (60) or even ninety (90) days. That is why, in our view, sub-rule (6) of Rule 102 provides that an application for extension of time may be made even though the time allowed has already expired. The word “may” runs through section 21 (2) of the Act, Rules 46 and 102 and indeed in the entire Act in describing the powers and duties of the Registrar.”
It appears that the odds were heavily stacked against Sony Holdings which was unable to persuade the courts to overrule the separation of powers doctrine and intervene, through the mechanism of judicial review. Sony Holdings’ arguments which were largely technical appear not to have been backed by sufficient evidence to demonstrate that the Registrar of Trade Marks exercised his statutory functions in a manner consistent with the “three I’s” (illegality, irrationally and impropriety).
With this definitive judgment by the Court of Appeal, this blogger reckons that a further appeal to the apex court by Sony Holdings is unlikely. Therefore this judgment paves way for Sony Corporation to argue out the merits of its opposition of the Sony Holdings trade mark applications as pictured above.