On this issue the Respondent‘s Counsel submitted that the Appellant‘s submissions on disclaimer
are not tenable. There is an undisputed fact that the Respondent is the registered owner of
Cafejavas and javas trademarks and has been running the restaurant business under that mark in
class 43 for over six years in Kampala and Entebbe. These outlets are commonly referred to as
Javas. The word Java incorporated in the Appellant‘s mark with an intention to use it for similar
services as that of the Respondent was right to be rejected through the exercise of the Registrar's
discretion. The Appellant did not adduce any evidence upon which the Registrar or any court can
rely on to hold and conclude that the word "Java" is descriptive of services of drink and food or
cafe. The fallacy of descriptiveness of the word in issue rules out application of section 10 (4),
19 and 26 of the Trademarks Act 2010. The Appellant has further registered the same trademark
in Kenya with no disclaimer. The Appellants arguments and therefore meant to abuse the process
in Uganda.
Consideration of irrelevant matters:
On this ground of the Respondent‘s Counsel submitted that the Registrar followed the
Trademarks Act including the notion and purpose of trademarks is defined and also applied the
principles.
Secondly the Registrar did not make an error in relying on the evidence of two witnesses that
consumers could be misled that the Appellant's outlet was economically linked to the
Respondent. The Registrar cautioned himself that there were only two witnesses and however
went ahead to exercise its discretion after believing them. The Registrar cautiously and fairly
considered all the evidence on record. This submission that the registered relied on the New
Vision newspaper report is diversionary and misconstrued. This is because the witness did not
attribute his belief in the confusion referred to in the newspaper article.
On the use of extrinsic evidence, the Respondent‘s Counsel contends that the Appellant
erroneously faults the Registrar for relying on what he defined as extrinsic evidence. The key
principles in determining the likelihood of confusion as demonstrated by the authorities include
having regard to all surrounding circumstances. Secondly he considered similarity of service.
Thirdly he considered the distinctive character of the mark because of the use that has been made