Recent media reports indicate that Sony Corporation has filed an appeal in the High Court against the decision of the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI) allowing the registration of two trade marks namely “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS).
Given the high likelihood that the High Court may defer to the expert determination of the Trade Mark Registrar, this blogpost considers the ruling made by the Registrar in the opposition proceedings with the costs totaling about Kshs 1,252,400.00 awarded to Sony Holdings.
In our previous blogposts here, we discussed the two suits filed by Sony Holdings in the High Court and Court of Appeal unsuccessfully challenging the Registrar’s decision to extend time within which a notice of opposition to the registration of its two trade marks could be lodged by Sony Corporation. It is still unconfirmed whether or not Sony Holdings will move to the Supreme Court for final determination of the matter and the apex court’s interpretation of this area of the law.
The Registrar set out three issues for determination in the opposition proceedings namely:
1. Whether the opponents’ trade mark “SONY” is a well known mark in Kenya and therefore deserving protection under the provision of section 15A of the Trade Marks Act.
2. Whether the applicants’ trade marks “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS) are so similar to the opponents’ trade mark as to cause a likelihood of confusion in contravention of the provisions of section 15(1) of the Act.
3. Whether the applicants have a valid and legal claim to the trade marks “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS) before applying to register the marks as provided for under section 20(1) of the Act.
The Registrar ruled against Sony Corporation’s opposition notice against Sony Holdings’ applications on all three of the above issues. The strongest indictment of Sony Corporation’s claims in the Registrar’s ruling came during the analysis of enforcement of the trade mark “SONY” in Kenya as part of the determination of whether the latter mark is well known in Kenya.
The Registrar aptly pointed out that apart from the opposition proceedings against Sony Holdings, the opponent Sony Corporation had never filed any opposition proceedings against registration of any other trade mark in Kenya on the ground that the trade mark was similar or identical to the trade mark “SONY”. Additionally, the Registrar noted that there was no record of rectification proceedings of the Register of Trade Marks that had been filed by the opponents with respect to any trade mark that had already been entered in the Register. In this regard, the Registrar concurred with Sony Holdings that a number of trade marks comprised of the element “SONY” or trade marks that are similar to the trade mark “SONY” had been entered in the Register of Trade Marks in the names of various proprietors. In fact, the Registrar cited a glaring instance whereby a trade mark application, No. 79974 “SONY SUGAR SIMPLY THE BEST” (WORDS) was actually published in the Industrial Property Journal of 31st January 2015, during the pendency of the opposition of Sony Holdings’ applications. In the SONY SUGAR case and several others contained in the above table, no opposition proceedings were filed by Sony Corporation or any other party against their registration and the trade marks have since been entered in the Register of Trade Marks.
On the critical issue of similarity and likelihood of confusion, the Registrar agreed with Sony Corporation that the term “HOLDING” that has been added to the Applicant’s trade marks does not aid in distinguishing the applicant’s trade marks from the opponents’ trade mark. However, the Registrar maintains that since the respective goods and services of the Opponents and the Applicants are not of a similar description, registration of the Applicant’s trade marks would not be contrary to the provisions of section 15(1) of the Act. In addition, consumers of the respective goods and services of the Opponents and the Applicants are deemed to be persons who would be discerning while making their purchases. In light of the fact that there are several other registered trade marks in Kenya containing “SONY”, the Registar found that consumers would already be accustomed to the use of the common element “SONY” by different proprietors and would not be likely to be deceived.
As always, this blogger will be keenly following the developments in the case through the courts.