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

SONY CYPyJGaWEAIOGvM

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.

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Sorry, Sony: Japanese Electronics Maker Fails to Prove “SONY” Trade Mark Well-Known in Kenya

sony shop kenya anisuma traders P1040664

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.

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Kenyan Java House Africa Triumphs Against Ugandan Cafe Javas in Crucial Trade Mark Court Case

Java House Africa Opens Grand Imperial branch Nile Avenue in Kampala Java House Coffee Shop Uganda Limited Photo by Sqoop

In a judgment delivered yesterday (February 9th 2016), the High Court of Uganda in Civil Appeal No 13 of 2015 has set aside the decision of the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB). Mr. Justice Madrama Izama allowed the appeal by Nairobi Java House Limited with costs and found that the two marks from Kenya and Uganda in question are capable of concurrent usage.

Readers will recall that in an earlier post here, we confirmed that Nairobi Java House had filed an appeal against the decision of the Registrar in relation to trade mark opposition proceedings filed by Mandela Auto Spares Limited. The proceedings were against the registration of trade mark application numbers 48062/2013 “Java House” and “Java Sun” and 48063/2013 “Nairobi Java House” in the name of Nairobi Java House. The Registrar in his ruling upheld the objection of Mandela Auto Spares Limited and found that the proposed registration of Nairobi Java House’s trade marks would lead to confusion in the marketplace.

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Oh là là Lacoste: Crocodile International Trade Mark Awaiting Registration in Kenya

Lacoste SA Crocodile International trademark logo

Readers of this blog may be aware of the 50-year trade mark battle that has been going on between Lacoste S.A and Crocodile International PTE Ltd (“CIL”). These companies were formed about 10 years apart on opposite corners of the globe: one in France in 1933 and the other in Singapore in 1943. Historically, the battle has focused on Lacoste’s right-facing crocodile mark and CIL’s left-facing crocodile mark with trademark suits filed in numerous jurisdictions around the world.

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All Eyes on Standard Bank as Barclays Bank “PRESTIGE BANKING” Trade Mark Published

Prestige Banking Trade Mark Barclays Standard Bank

The image above is a collage of screenshots from the websites of Standard Bank and Barclays Bank showing that both banks have banking products/services branded with the identical words: “Prestige Banking”. In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 79424 “PRESTIGE BANKING” (WORDS) by Barclays Bank PLC on pages 10-12 of the August 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Standard Bank to oppose the registration of this mark by Barclays Bank, if it so wishes.

In this regard, Standard Bank would also wish to consider the recently published ruling of the Registrar of Trade Mark in the matter referenced as In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING., 6th February 2015. In this ex parte hearing, Barclays appeared before the Registrar to challenge the latter’s decision to reject Barclays’ applications for “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) for being similar to the mark SMA NO. 2976 “PRESTIGE PLAN” (WORDS AND DEVICE) in the name of the Standard Bank of South Africa with respect to services of a similar description and character as those in respect of which the applications by Barclays had been made. A copy of the ruling is available here.

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Bridgestone Triumphs in “KINGSTONE” Trade Mark Opposition

Kingstone Trade Mark Sichuan Yuanxing Rubber Tire

This blogger has received a copy of a recent trade mark ruling by the Registrar of Trade Marks referenced as In Re TMA No. 68687 “KINGSTONE”, Opposition By Bridgestone Corporation, 25th May 2015. A copy of the ruling is available here.

In this matter, Sichuan Yuanxing Rubber Co. Ltd applied for registration of “KINGSTONE” as a word mark in Class 12 of the International Classification with respect to tyres. Bridgestone Corporation opposed the registration of the mark by stating that its mark “BRIDGESTONE” is a well-known mark in Kenya and around the world registered in various classes including class 12. Therefore Bridgestone argued that the mark “KINGSTONE” is so similar to the its trade marks “BRIDGESTONE” and “FIRESTONE” as to be identical to the latter and Sichuan’s trade mark would be likely to deceive and or cause confusion among the members of the public.

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“SONA MOJA” Firm Successfully Opposes “DAWA MOJA STRONG” Trade Mark

SONA MOJA DAWA KENYA

“The mark in consideration in these opposition proceedings is a word mark, “DAWA MOJA STRONG”. The mark is comprised of two Kiswahili words which translate to “MEDICINE” and “ONE” respectively, in the English language. The third element of the mark is the word “STRONG”. This means that considered as a whole, the mark would literary (sic) be translated to mean “ONE STRONG MEDICINE”. It is my view that when such a term is sought to be registered and used as a trade mark for pharmaceutical products, the application must fail because the term does not qualify as a trade mark under the provisions of the Trade Marks Act.” – Assistant Trademark Registrar, Ruling in DAWA MOJA STRONG Trade Mark Opposition.

This blogger has received a copy of a recent trade mark ruling by the Registrar of Trade Marks referenced as In Re TMA No. 75546 “DAWA MOJA STRONG”, Opposition By Dawa Ltd and Sonal Holdings Ltd., 14th April 2015. A copy of the ruling is available here.

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