For the Second Time, Sony Trade Marks Case Goes to the Court of Appeal

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Since 2014, we have chronicled on this blog here, here and here an interesting trade mark dispute in Kenya between local company Sony Holdings and Japanese electronics maker Sony Corporation. This blogger is reliably informed that an appeal has already been filed in the Court of Appeal against last month’s decision of the High Court in the reported case of Sony Corporation v Sony Holding Limited [2018] eKLR. In order to discern the likely grounds of appeal, it is important to consider this recent judgment made by the High Court.

As earlier predicted here, Judge Tuiyott sitting in the High Court concurred almost entirely with the ruling of the Assistant Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Right from the start, the High Court framed the following three issues for determination as previously set out by the KIPI Registrar:

‘a) is the Appellants’ [Sony Corporation’s] Trade Mark a well known mark in Kenya and therefore deserving protection under the provisions of section 15A of the Act?

b) Are the Respondents’ [Sony Holdings’] marks “SONY HOLDINGS” (WORDS & DEVICE) and “SONY HOLDINGS” (WORD) so similar to the Appellant’s’ Trade Mark “SONY” (WORD & DEVICE) as to cause a likelihood of confusion in Contravention of the provisions of sections 14 and 15(1) of the Trade Mark Act?

c) Did the Respondent have a valid and legal claim to the Trade Mark “SONY HOLDINGS” (WORD & DEVICE) and “SONY HOLDINGS”(WORDS) before applying to register the marks as provided for under section 20(1) of the Trade Marks Act?’

With regard to the first issue of well knownness of the SONY trade mark in Kenya, the court upheld the decision of the Registrar against Sony Corporation and stated as follows:

The conclusion by the Assistant Registrar, and now upheld by this Court, that the Appellant had failed to prove that “SONY” is a well-known Trade Mark in Kenya may be a shock to many. Is it not obvious to the Assistant Registrar and the Judge that “SONY’ is a Global Brand and well-known to many Kenyans, it can be asked? The trouble however is that in the absence of proof presented by the parties or matters which the Court can take judicial notice, the Assistant Registrar and this Court cannot draw a conclusion from its own personal perception. The factors for consideration in determining whether a Mark is a well-known Mark are clearly spelt out and known. A person asserting well-knowness of a Mark bears the responsibility of submitting information (evidence) in respect to factors from which the competent authority may infer that the Mark is indeed well known. This is not left to the perception or personal inclination of the competent authority.

With regard to the second issue of likelihood of confusion, the court focused on the question whether the goods or description of goods or services for the Respondents Mark was in respect to the same goods or description of goods or services for the Appellant’s Mark. As readers will recall, Sony Holdings’ main contention was that Sony Corporation deals in electronics while it deals in construction and real estate and thus the goods offered by the two are not sold or accessed side by side and there will be no likelihood of confusion.

The court noted that that Sony Corporation is the owner of the trade mark ‘Sony’ for classes 9, 35, 36, 37, 38, 39, 40, 41 and 42 while Sony Holdings had filed its marks in classes 12, 16, 25, 35, 36, 37, 39 and 45. As such, there was an overlap in classes 35, 36, 37 and 39. With respect to these specific classes, the court disagreed with KIPI Registrar that the notional consumer for both parties is sufficiently discerning and is unlikely to be confused by the similarity of marks.

Similarly, with regard to the third issue of legitimate proprietorship, the court departed from the ruling of the Registrar and found in favour of Sony Corporation with respect to Sony Holdings’ marks in classes 35, 36, 37 and 39. In particular, the court faulted the Registrar’s finding that Sony Holdings had enjoyed an honest concurrent use in respect to trade marks of Sony Corporation and since the Japanese global company did not raise an issue with the use then it amounted to acquiescence on its part. The court was unconvinced by two photographs submitted by Sony Holdings intended to prove that it had been actively using the marks in Kenya. In this regard, the court stated as follows:
‘Two photographs are reproduced. One of picture of the walkway and another of the signage on the construction of the walkway. In respect to the management and ownership of Westgate Mall [by Sony Holdings] no documentary evidence was given. This court is of the view that this evidence was far too tenuous to show concurrent use and I very much doubt the correctness of the Assistant Registrar’s Decision that Use, let alone, Honest use had been established. If there was no use, then acquiescence cannot arise.’

As a result, the High Court partially upheld the appeal by Sony Corporation in that Sony Holdings’ marks under classes 35,36,37 and 39 would not proceed to registration. However, the court disagreed with Sony Corporation that its ‘Sony’ mark is well known in Kenya. As always, we shall be keeping tabs on this matter as it proceeds to the Court of Appeal.

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