[2018] KEHC 6604 (KLR)

[2018] KEHC 6604 (KLR)

The court held that the appellant failed to prove that 'SONY' is a well-known trademark in Kenya as required by section 15A of the Trade Marks Act. The evidence provided by the appellant, including global recognition and sponsorships, did not sufficiently demonstrate recognition, use, or promotion of the mark...

Source-derived case information.

Citation
[2018] KEHC 6604 (KLR)
Parties
Appellant: Sony Corporation; Respondent: Sony Holding Limited
Court
High Court
Court Station
High Court at Nairobi (Milimani Commercial Courts)
Jurisdiction
Kenya
Case Number
Civil Appeal 376 of 2015
Procedural Posture
Civil Appeal / Judgment
Outcome
Appeal partially allowed.
Judges
F Tuiyott
Legal Topics
Trade Marks, Well Known Marks, Likelihood of Confusion, Honest Concurrent Use, Proprietorship of Mark, Registration Classes
Source Language
en
Intellectual Property Trade Marks Well Known Marks Likelihood of Confusion Honest Concurrent Use Proprietorship of Mark Registration Classes

Source-derived case record

Summary, issues, holding and outcome

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Parties

Sony Corporation

Appellant

Sony Holding Limited

Respondent

Procedural Posture

Civil Appeal / Judgment

Legal Issues

  1. 1 Is the appellant's 'SONY' trademark a well-known mark in Kenya deserving protection under section 15A of the Trade Marks Act?
  2. 2 Are the respondent's marks 'SONY HOLDINGS' (words & device) and 'SONY HOLDINGS' (word) so similar to the appellant's mark as to cause a likelihood of confusion under sections 14 and 15(1) of the Trade Marks Act?
  3. 3 Did the respondent have a valid and legal claim to the trademark 'SONY HOLDINGS' before applying for registration under section 20(1) of the Trade Marks Act?

Ratio Decidendi

The court held that the appellant failed to prove that 'SONY' is a well-known trademark in Kenya as required by section 15A of the Trade Marks Act. The evidence provided by the appellant, including global recognition and sponsorships, did not sufficiently demonstrate recognition, use, or promotion of the mark specifically in Kenya. The Registrar was correct to require evidence of the mark's status in Kenya, and the appellant did not discharge this burden. However, the court found that the marks of the parties are similar and that, in classes 35, 36, 37, and 39, there is an overlap in goods and services, which would likely cause confusion. The respondent failed to establish honest...

Court Disposition

Appeal partially allowed.

Orders

  • The decision of the Assistant Registrar of Trade Marks dated 5th June 2015 is set aside in respect of classes 35, 36, 37, and 39.
  • The respondent's marks under classes 35, 36, 37, and 39 shall not proceed to registration.