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Court of AppealDismissedCivil Application No. NAI 203 of 2012 (UR 147/2013)· [2014] KECA 841 (KLR)

Republic ex-parte Sony Holdings Limited v The Registrar of Trade Marks & Sony Corporation

Court of Appeal
14 February 2014
1,596 words in judgment
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The bottom line

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Kenya's Court of Appeal refused to pause a trademark opposition case, ruling that a valid appeal alone is not enough to get a stay.

What this practically means

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Executive summary

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Sony Holdings Limited applied to the Court of Appeal under sections 3A and 3B of the Appellate Jurisdiction Act and Rules 5(2)(b) and 47 of the Court of Appeal Rules for a stay of trademark opposition proceedings before the Registrar of Trademarks pending the hearing of its appeal (Civil Appeal No. 37 of 2013) against a High Court judgment of 20th November 2012. In that judgment Warsame J had dismissed the applicant's judicial review application seeking certiorari to quash the Registrar's decision to extend time for filing notice of opposition and to quash the opposition proceedings, and mandamus to compel registration of the applicant's trademarks TMA No. 65981 and TMA No. 65982. The background was that Sony Corporation sought to oppose the registration after the 60-day window under rule 46 of the Trade Marks Rules had expired, and the Registrar granted an extension of time. Applying the settled twin principles in Ishmael Kagunyi Thande v Housing Finance of Kenya Ltd, the court found the intended appeal arguable - particularly on whether the Registrar has unfettered discretion under rule 102 to extend time - but held that the applicant had not demonstrated that the appeal would be rendered nugatory if the opposition proceedings continued, since the statute reserves the parties' rights to challenge the Registrar's decision in court afterwards. The application was dismissed with costs abiding the outcome of the appeal.

Key legal issues

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01

Arguability of the intended appeal

Holding

The intended appeal was arguable, particularly on whether the Registrar has unfettered discretion under rule 102 of the Trademarks Rules to extend time for filing notice of opposition

Reasoning

The court was unable to say the intended appeal was frivolous. It found it arguable whether, under rule 102 of the Trademarks Rules, the Registrar has unfettered discretion to extend time. It reiterated that an arguable appeal is not one that will necessarily succeed, so the threshold is low.

p. 3
02

Nugatory value of the intended appeal

Holding

The applicant failed to demonstrate that the appeal would be rendered nugatory if the opposition proceedings proceeded; the second limb of the rule 5(2)(b) test was not met

Reasoning

The court considered the material and counsel's arguments but was not satisfied that a stay was necessary. It noted that the parties' rights to challenge the Registrar's decision after the culmination of the opposition proceedings are reserved under the statute, so any dissatisfied party would have recourse to the courts.

p. 3

Legal principles established

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  • An applicant under rule 5(2)(b) must satisfy both the arguability of the appeal and that the appeal will be rendered nugatory without the stay or injunction sought
  • An arguable appeal need not be one that will necessarily succeed; it is enough that it is not frivolous

Court orders

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  1. 1.The applicant's application for stay of opposition proceedings is dismissed
  2. 2.The costs of the application will abide the outcome of the appeal

Authorities

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Legislation

  • Appellate Jurisdiction ActSection 3A
  • Appellate Jurisdiction ActSection 3B
  • Rules of this Court (Court of Appeal Rules)Rule 5(2)(b)
  • Rules of this Court (Court of Appeal Rules)Rule 47
  • Trade Marks ActSection 21
  • Trade Marks ActSection 41
  • Trade Marks ActPart III
  • Trade Marks RulesRule 46
  • Trade Marks RulesRule 102

Cases cited (1)

  • Ishmael Kagunyi Thande v Housing Finance of Kenya Ltd
    Civil Application No. Nai 157 of 2006

    The twin principles for granting stay or injunction under rule 5(2)(b): arguability and nugatory value

On appeal from
High Court
H.C. Judicial Review Misc. No. 165 of 2012
Jurisdiction invoked
Sections 3A and 3B of the Appellate Jurisdiction Act (Cap 9) and Rules 5(2)(b) and 47 of the Court of Appeal Rules

Key timeline

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Practical implications

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Frequently asked questions

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Cite this brief

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Cite this brief

Caselaw, "Republic ex-parte Sony Holdings Limited v The Registrar of Trade Marks & Sony Corporation", Case Analysis (2014). Civil Application No. NAI 203 of 2012 (UR 147/2013). Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2014/841/eng@2014-02-14

Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.