Sony Holdings Ltd v The Registrar of Trade Marks & 1 other
The bottom line
#Kenya's Court of Appeal confirmed that the Registrar of Trade Marks can extend opposition deadlines well beyond the usual 60 days, so early advertisement does not guarantee registration.
What this practically means
#Executive summary
#Key legal issues
#Scope of the Registrar's power to extend time under Rule 102 of the Trade Marks Rules
Rule 102 confers a general, discretionary power on the Registrar to extend time for doing any act under the Rules, even where the time has expired, and the word 'may' permits extension beyond sixty or ninety days for good reason
Rule 46 prescribes sixty days for notice of opposition, but Rule 102(1) allows the Registrar to extend time for doing any act on conditions he specifies. Sub-rules (2) and (3) use the permissive 'may', and sub-rule (6) expressly allows applications even after expiry of time. The provisions do not prescribe consequences of non-compliance and are directory; a purposive construction favours hearing the opposition on merit.
Whether the appellant's legitimate expectation and right to fair administrative action were violated
No violation: the appellant was all along aware of the extension applications (which were copied to its advocates) and there is no automatic right to registration upon advertisement
Legitimate expectation requires a promise or representation from a public body that would reasonably be expected to continue. Advertisement does not confer an automatic right to registration, and the appellant had been notified of the existence of similar marks. The extension requests were copied to its advocates, so it could not complain of being unheard.
Whether the High Court erred in declining certiorari and mandamus
The Registrar exercised his discretion judicially and fairly within the bounds of the law; no illegality, irrationality or impropriety was demonstrated and mandamus cannot compel registration where the law requires opposition to be heard first
Mandamus only compels performance of a public duty imposed by statute; the Registrar's duty under section 20 involves discretion as to mode, and the law requires him to hear any opposition before registering a mark. No substantial prejudice was occasioned by the delay, and a fair hearing before the Registrar remained possible.
Legal principles established
#- The Registrar of Trade Marks has a general power under Rule 102 to extend time for doing any act under the Trade Marks Rules, including the sixty-day period for giving notice of opposition under Rule 46, and may extend time beyond sixty or even ninety days for good reason; the provisions are directory, not mandatory
- A discretion exercised by a statutory body or judge will only be interfered with on appeal where it is shown the decision-maker misdirected himself on the law or facts, or took into account irrelevant matters, occasioning a miscarriage of justice
- Where a statutory provision or rule does not prescribe the consequences of non-compliance, the court must determine whether it is mandatory or directory by ascertaining the intention of the legislature or rule-maker, considering whether invalidity was a purpose of the legislation
- Judicial review is concerned with the decision-making process, not the merits; the court intervenes only where illegality, irrationality or impropriety is demonstrated
Court orders
#- 1.Appeal dismissed
- 2.Appellant to pay costs of the appeal
- On appeal from
- High Court of Kenya at Nairobi
- H.C. Judicial Review Misc. Civ. Appl. No. 165 of 2012
- Jurisdiction invoked
- First appellate jurisdiction over the High Court in a judicial review matter (Constitution and Court of Appeal jurisdiction); appeal on construction of section 21 of the Trade Marks Act as read with Rules 46 and 102 of the Trade Marks Rules
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Sony Holdings Ltd v The Registrar of Trade Marks & 1 other", Case Analysis (2015). Civil Appeal No. 37 of 2013. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2015/904/eng@2015-03-06
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.