ground of pronunciation as abstract. He contended that the pronunciation of the word "Java" by
indigenous Ugandans would vary from region to region.
On the question of conceptual comparison, the Appellant‘s submissions on the Registrar's
analysis on conceptual similarities distort the ruling. The ruling shows that the Appellant‘s mark
comprises of words and the device of a face a red sun on a yellow background. Secondly he sets
out the stylised words Cafe javas with cafe in Orange and Java in black as well as the device of a
smoking cup in the right-hand corner. From the description of the features of the trademarks in
dispute it is sufficient that the Registrar makes the analysis he did having sufficiently compared
them conceptually. Finally Counsel submitted that the Registrar was within his right to establish
that there was a dominant component in the mark in the word Java.
Concerning the descriptiveness the Respondent‘s Counsel submitted that the Registrar made a
specific finding and rightfully so that the word Java is not descriptive of restaurant activity. This
can be found in paragraphs 14 and 16 of the ruling. The Registrar aptly addresses the
descriptiveness of Java in relation to a trademark application in class 43 for the provision of food
and drink services. Furthermore the Registrar found that the word "Java" which describes coffee
cannot be used to describe what coffee as is used for or how it is sold or consumed or other
usage. The key word is "describe". The Registrar dealt with descriptiveness properly.
The aspect of the generic reference in the ruling addresses the second and legal ground upon
which a party cannot have exclusive protection under the trademark. The Registrar was right and
in order to disclose that aspect including section 43 (2) of the Trademarks Act and the authority
of Rewe Zentral vs. OHIM (LITE) 2002 ERC 11- 705. The Registrar demonstrated that the
Respondent‘s registered trade mark remains protected unless it loses its status by use thereof by
third parties. No use by third parties of Javas or Java for restaurant business exists in Uganda so
as to make it generic. The Registrar rightly found that the word Java is not descriptive of food
and drink service or even the coffeehouse.
The submissions on the dictionary meaning of the noun Java which may mean coffee
misconstrues the very notion of trademarks. It trademark is about distinguishing a service as that
of its holder but not the service (coffee) itself. Section 1 of the Trademarks Act, Act 17 of 2010
defines trademark as a sign or mark or combination of signs or marks capable of being