represented graphically and capable of distinguishing goods and services of one undertaking
from another undertaking. The Respondent further relies on the definition of Lord Templeman in
the Re-Coca-Cola Company Application [1986] All ER 274 at 276. Counsel further relied on
the definition of a trademark by Lord Nicholls in Scandecor Development AB versus
Scandecor Marketing AB [2002] FSR 122 at 33. A Trademark Acts as a badge of origin and
stresses that inherent in the definition in the UK Trademarks Act 1994 is the notion that
distinctiveness as to business source is the essential function of trademarks. The Respondent‘s
Counsel reiterates that the word Java is a dominant part of the badge of the Respondent for the
last six years in the territory of Uganda. Any other entity prominently using it can be mistaken
for the one of the Respondent‘s outlets.
The argument that the word "Java" is a common noun in coffee and trade descriptive is not
supported. The word "Java" is not a common noun in Uganda. There is no dictionary meaning
that defines Java as a coffee restaurant or a place where food and drink is sold. The dictionary
simply defines it as coffee and more colloquially a type of coffee bean. Furthermore nowhere is
the word "Java" defined to describe the business of restaurants offering food and drink or even
simply a restaurant offering coffee drink so as to describe a service. The use of the word "Java"
has not been expressly prohibited by law i.e. in comparison with the word "pretend",
"registered", "Red Cross", which are prohibited words.
There are various dictionary words in different languages. For instance the word Java is an island
in Indonesia. Having a word in the dictionary does not necessarily make it a common word and
no evidence was adduced anywhere to proof, one understanding of that word in Uganda. In the
premises the word can be used in a trademark.
Section 26 of the Trademarks Act is inapplicable because the above two tests have not been met.
The first test is that the mark must contain matter, and the provision of services. The second test
is that the Mark must be of a non-distinctive character. The mark has obtained distinctiveness
due to the use by the Respondent for more than six years. In the premises the ruling of the
Registrar in declining to apply section 26 of the Trademarks Act 17 of 2010 is well founded on
fact and law.
Disclaimer in Part B