My cherished LLB dissertation was all about this case. Let us talk about it, on the blog today.
The High Court of Kenya’s decision in Sony Corporation v Sony Holdings Limited, handed down by Justice Tuiyott on 29 May 2018, stirred quite a bit of discussion. Much of the commentary has focused on the striking result. Sony, one of the world’s most recognised brands, was refused protection as a well-known trademark. But the judgment deserves a closer reading; it is not quite as straightforward as that headline suggests.
Here is what happened. A company called Sony Holdings Limited applied to register two trademarks in Kenya, ‘Sony Holdings’ and ‘Sony Holdings’, with a device mark. The applications spanned eight classes; vehicles (12), paper goods (16), clothing (25), business services (35), financial services (36), repair services (37), transport (39), and class 45, which covers a range of services including legal, security and personal matters.
Sony Corporation of Japan opposed the applications. For classes 35, 36, 37 and 39, it relied on existing registrations it already held in Kenya. For the remaining classes, 12, 16, 25 and 45, it argued that ‘Sony’ was a well-known trademark and thus entitled to broader protection under section 15A of the Trade Marks Act.
The Assistant Registrar rejected Sony Corporation’s opposition in its entirety. Sony appealed to the High Court. Unsurprisingly, the judge disagreed with the Registrar’s finding on the overlapping classes. The court accepted that there was clear evidence of actual or likely confusion, so the opposition should have succeeded in those four categories.
The more contentious issue was the treatment of the non-overlapping classes, those where Sony was relying solely on the argument that its mark was well-known. On that point, the judge sided with the Registrar. In reaching his conclusion, Justice Tuiyott referred to guidance from the World Intellectual Property Organisation (WIPO), which sets out a range of factors that may be considered when determining whether a mark is well-known. These include the extent to which the mark is recognised in the relevant sector, the duration and breadth of its use and promotion, where and how it is registered, enforcement history, and the commercial value associated with the mark.
Sony Corporation argued that its extensive global reputation, including high-profile sponsorships such as the FIFA World Cup, was sufficient. It said the World Cup was broadcast on free-to-air television, implying wide public exposure in Kenya. The judge was unconvinced, calling this speculative. Evidence was required of Kenyan viewers actually having seen these broadcasts. Sony could have invited the court to take judicial notice of its reputation under a provision of the Kenyan Evidence Act, but it failed to do so.
The court was also unpersuaded by a list of Sony’s global trademark registrations. Copies of the actual certificates were required. Assertions that Sony was a top brand by sales were dismissed as unsubstantiated. Claims that Sony products were sold in Kenya were similarly dismissed, since no sales figures were presented.
The only piece of evidence the court considered of any real substance was Sony’s claim about the brand’s value, backed by rankings from branding agencies. Even that, the judge said, was not enough on its own. The court made clear that a single strong point, whether it be sales, sponsorship, or brand rankings, would not suffice. A broader, more comprehensive showing was required.
Ultimately, the court found that Sony had failed to demonstrate that its mark qualified as “well-known” in Kenya. As the judge observed, this result “may be a shock to many.” In reaching this outcome, the judge referred to a number of international authorities. One case was McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Limited, from South Africa. There, the court accepted that the McDonald’s brand was well-known even before it began trading in the country, based on survey evidence, local media coverage and approaches from prospective franchisees.
Justice Tuiyott stressed that courts should be cautious about interfering with decisions made by the trademarks registry. Such decisions should only be overturned in the event of a material error of principle or other compelling reason. In this case, the refusal to block the application in the overlapping classes was found to be an error and was reversed. The decision not to recognise Sony’s mark as well-known, however, was upheld.
On the whole, this judgment should not be seen as anti-brand or hostile to international rights holders. Rather, it goes to show that the principle that the label of “well-known mark” is a serious designation and not one to be handed out without rigorous evidence. Mere reputation or assumption will not do. In Kenya, as elsewhere, claims of fame must be proven, not presumed.
Read the case here: