between the marks and vice versa. He contended that the principle of offsetting a lesser similarity
between marks is pivotal to this case.
The Respondent‘s Counsel further submitted that there is a greater likelihood of confusion where
the earlier mark has a highly distinctive character either per se or because of the use that has been
made of it. For emphasis the Respondent has used the Javas trademark for over six years in
Uganda in five different locations in Kampala and one in Entebbe. There is no evidence that in
Uganda anyone else had used the word Cafe Javas in relation to the provision of foods and
drinks as envisaged by section 43 of the Trademarks Act.
Counsel further relied on the case of Specsavers (supra) for the holding that the court must
consider the matter from the perspective of the average consumer of the goods or services in
question and must take into account all circumstances of that use likely to operate in that average
consumer's mind in considering the sign and the impression it is likely to make on him. The sign
should not be considered out of context. Furthermore the reputation of an earlier mark is to be
taken into account when determining a likelihood of confusion. In particular the more distinctive
the earlier Mark the greater the risk of confusion. In the premises the Respondents undisputed six
years reputation for 5 outlets in Kampala and 1 in Entebbe warrants a broader protection on
account of its distinctiveness.
Counsel further submitted that the emphasis on taking into account the distinctive and dominant
features and category of goods and services in question and the circumstances in which they are
marked while applying the global test runs through all the authorities cited. Furthermore section
16 (2) of the Trademarks Act enjoined the Registrar of Trademarks to admit evidence of business
usage in such actions and this was done.
The Respondent‘s Counsel submitted that the above overview applies widely to the appeal. The
first two grounds argued together by the Appellant are not part of the grounds of appeal. They
raise issues of aural and conceptual comparison as a whole and further that the Registrar treated
the trademark as mere word marks. Contrary to the submission the Registrar set out the test
comprehensively in paragraph 34 of the ruling and in particular the Registrar was alive to the
visual, aural and conceptual similarities of the marks. Furthermore the Appellant did not raise the
pronunciation of the mark before the Registrar as they have done in this appeal. The fact that the