On 29th May, 2018 the High Court of Kenya rendered judgment in the case of Sony Corporation versus Sony Holdings Limited [2018] eKLR which sent shock waves among owners of well-known brands. The media reports gave the impression that well known brands were under threat in Kenya.

This judgment came hot on the heels of reports that Barclays Plc had been temporarily barred from changing its name to ABSA following a suit filed by a local company that had registered the trade mark in Kenya prior to the acquisition of Barclays by ABSA.

Before then, the first shot had been fired by another High Court judgment in Fibrelink Limited v Star Television Productions Ltd [2017] eKLR in which the court curiously held that the owner of an unregistered trade mark was entitled to block the registration of the mark by another party. This 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 which 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.

Sony Corporation, the global electronics giant, claimed that it had registered and used the SONY brand for over fifty 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 was 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 which would lead 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/services where there is no 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. Firstly, 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.

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. Firstly, evidence that some Kenyans indeed accessed the sponsorship programmes was not necessary to prove that the SONY mark was well known in Kenya. It is common knowledge that free to air television is viewed by millions of Kenyans daily. The Registrar should have taken judicial notice of this fact without requiring any proof. The Evidence Act allows judicial and quasi-judicial officers to take certain matters as proved based on the officer’s own recognition of the existence or otherwise of the fact or phenomenon without the need for any evidence. Section 60 of the Act specifically mandates a court/tribunal to take judicial notice of ‘all matters of general or local notoriety”. On this basis, the Registrar and the court could have safely reached the conclusion that the SONY mark is well known in Kenya and accorded it the protection reserved for such marks under the 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 judgement, 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.

The article was featured in the Business Daily on 12th July 2018 and can be accessed here.