Registrar resolved issues and submissions before him does not take away the fact that he was
alive to the test as a whole.
The argument that the Trademarks Act of Uganda does not include the notion of association is
untenable. What is key is that it does not exclude association. The Act does not attempt to give
examples of what may be included unlike the UK Act which gives an example of what is
included by use of the phrase "which includes" which phrase simply means that there are other
considerations that are included. There is no exhaustive list of what can be included.
As far as arguments on visual comparison are concerned, the Respondents Counsel submitted
that the word ―Javas‖ is distinct and prominent in the Appellant trademarks. "Cafe Javas" is part
of the composite mark with distinct words i.e. "Cafe" and "Javas" the Respondent rightly
disclaimed the word "cafe" as noted by the Registrar. The distinguished colour features of the
two words make them stand out distinctively. The Registrar's analysis in paragraphs 40 and 41 of
the ruling on conceptual similarities falls within the criteria in the Specsavers case (supra) some
of which the Appellant's Counsel conveniently left out. The Respondent‘s Counsel concluded
that there is a greater likelihood of confusion because of the use of the trademark by the
Respondent in five outlets in Kampala and one in Entebbe. It is within Kampala that the
Appellant was to have the confusing Java mark. The word Java in the Appellant's mark is
dominant. An attempt by the Appellant to submit that the word "Sun" is the dominant feature in
their trademark is untenable. The dominance of the word Java in the Appellant‘s mark is brought
out by the strenuous attempts to have it registered by the Appellant. The Registrar's decision on
likelihood of confusion finally was supported by the authorities.
The Respondents Counsel also sought to distinguish the cases of OHIM vs. Shaker on the
ground that the court found that there was no dominance at a visual level and that was the subject
of the appeal. There was no argument in this case regarding pronunciations of the mark. By not
mentioning the word aural, it does not mean that the Registrar did not consider it.
The Respondent‘s Counsel further does not agree that the word "Javas" is absent from the
Respondents trademark ―CafeJavas". These are words which have been joined. The word "cafe"
is a descriptive word. Consequently the joined words cannot be said to be one word from which
the word "Java" can be discerned. Secondly Counsel attacked the Appellant's submissions on the