Wednesday, August 17, 2022
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    Is our future trademarked?

    I read a very interesting article this week that feeds into my column last week but also looks at the future, now that African countries are signing the largest Free Trade Area.

    The article is about a court judgment from Kenya related to intellectual property. The case relates to a company by the name of Sony Holdings which deals in real estate in Kenya, and has done so for fourteen years. This company had trademarked its name “Sony Holdings” and the trademark is owned by Westgate Mall, one of the largest and more modern malls in Nairobi.

    Now if you are trying to understand how Sony and real estate are linked, it is probably because you are confusing the “Sony Corporation” that is the Japanese company the makes televisions, radios and a few other electronic tools that you own with “Sony Holdings”, the Kenyan company, that has no connections whatsoever with the Japanese one.

    As can be expected, Sony Corporation had moved to court seeking to reverse the industrial property rights agency’s decision to allow the registration of Sony Holdings, but it did not go as expected. Justice Francis Tuiyot made the findings in the suit Sony Corporation had filed against owners of Westgate Mall seeking to retain exclusive rights over the “Sony” tag.

    The Registrar of Trademarks in 2015 ruled that Sony Corporation had not provided enough evidence to show the degree of knowledge of its trademark among Kenyan electronics users. The registrar also argued that property developer, Sony Holdings, had since its inception carried out honest real estate business and could not be said to be using the Japanese company’s name to deceive the public. However, Japan’s Sony held that the registrar ignored crucial evidence it provided in support of its opposition to the recording of the Sony Holdings trademark.

    During his ruling, the Judge asked, “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 shock to many. Is it not obvious to the assistant registrar and the judge that Sony is a well-known global brand it can be asked?”

    The Court also ruled that Sony Holdings marks should not be registered under marks in the four categories where Sony Corporation has been registered, but Sony Corporation will not get exclusive rights over the tag “Sony”

    In my view this is a very important case and the determination of the court is one that we all have to consider closely. One of the main things that large corporations do all around the world is register their trademarks around the world. The deeper question addressed by this court is whether Sony is in fact a recognized brand in Kenya and whether the company is benefiting from the name and goodwill established by the Japanese company? This could be difficult to prove and court decisions similar to the one in Kenya will be made.

    As Africa embarks on the journey of creating the largest Free Trade Area, intellectual property is one of the key areas in which negotiations will be held and how we deal with it, how we recognize it and the extent of protections offered will have to be laid out on the table. I thought of the news reported a few years ago about the Maasai wanting to trademark the name as companies were selling “maasai bathing suits” and “maasai jewelry” with no royalties or payments to the Maasai. The more I think about trademarks, the more I wondered whether we now have to think about trademarking names of our cultural practices and others, just so we can “legally” own them. 

     

    Contributed by Leyou Tameru

     

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