One of the latest developments in Kenya is news of a really strange case to
have made its all the way to the Court of Appeal in Nairobi. Attracting the
attention of a three judge bench to appeal against a High Court review of a
Registry decision to allow an extension of time in an opposition, local company
Sony Holdings sought to avoid an opposition against their trade mark
applications including the word SONY by arguing the Registry acted ultra
vires (outside its powers) in granting an extension of time to the
opponent. Meanwhile, patiently waiting for their chance to argue the merits of
the opposition is, you guessed it, Sony Corporation, owners of the reputable
SONY mark.
Despite the oddity of pursuing a technicality under
circumstances which seem impossible to have succeeded, the decision has brought
some welcome insight into the degree of thoroughness of the Court of Appeal as
well as providing clarity on the discretion of the Registry and extension of
time proceedings in Kenya. You can read the full decision here.
The High Court had dismissed the review on the basis that:
1.
The
allegation of excess jurisdiction could only be challenged by review
proceedings;
2.
There
was no legitimate expectation of a mark proceeding to registration once it had
been advertised, more so if there has been notification of a third party owning
similar marks;
3.
That
the Registrar has wide powers to extend time periods under the Trade Marks Act
and can provide as many as they like, provided they do not exceed 90 days at a
time; and
4.
The
Registry had exercised their discretion within the bounds of the law in
allowing the extension of time.
The appeal was lodged on 14 different grounds argued in 3
clusters that:
1.
The
Registry has now power to grant extensions of time following the lapse of 60
days after the period for commencing opposition proceedings;
2.
The
Registry violated the Applicant’s right to a fair administrative action and
legitimate expectation; and
3.
The
Registry violated the Applicant’s right to a fair administrative action and
freedom from discrimination.
The appeal court concluded that the single broad issue was
whether the Registry had the discretion to extend time periods under Section
21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.
It is settled law in Kenya that a higher court can only
interfere with the discretion exercised by a lower court if the decision maker
misdirected his interpretation of the law, misapprehended the facts, took into
account matters which he should not have, and ignored relevant ones as a result
of which an incorrect decision was made. In other words that one of the 3”I”s
was present - illegality, irrationality or impropriety. The court then
dissected the relevant Section and Rules within the context of interpretation
jurisprudence (local and from Australia) in coming to the conclusion that:
- Notices
of opposition should be lodged within 60 days of the date of
advertisement;
- The
Registry has unfettered powers to extend the period beyond that, even
beyond 90 days, for good reason.
The Judges then considered the purpose of trade mark law
which is to “avoid unfair competition”, the public interest and the nature of
the case, that the delay was not prejudicial and not necessarily, unreasonable.
Also, that the appellant could not have suffered an adverse expectation because
they were at all times aware that extensions were being granted. They also
considered the law of review as it is applied in Kenya and concluded that like
the High Court, the Registry had acted judicially and fairly.
Hence the appeal had no merit and was dismissed with costs.
