Bainbridge in his textbook on Intellectual Property Sixth Edition at page 597 to be capable of
distinguishing goods and services of one undertaking from another, the trademark must say or be
capable of saying on its face that the goods or services come from X rather than from Y or Z.
The trademark is an indicator of origin of the goods or services. It is a guarantee of trade origin
or a badge of origin of the goods or services. The statute itself provides for marks which may or
may not be registered.
The first element worthy of note is that the Registrar held that the most standout element in the
contested trademark is the use by both contestants of the word ―Java‖. The Respondent had been
registered in part A in respect of use of that word ―Java‖ in part of the trademark which gives the
basis of the opposition to registration of the Appellant. By holding that this was the common
element that made the trademark capable of distinguishing the services he determined the issue
of inherent capability to distinguish though in relation to the Respondent‘s mark as well. The
averment that there was an error to hold that the word ―Java‖ was not an original coinage in
ground 1 of the appeal takes the analysis to a different realm. The grounds in the
counterstatement of the Appellant in answer to the opposition included averments that the name
"Java" is not an original coinage that can be used exclusively by one person. Secondly the word
"Java" refers to "coffee" and the place where variations of coffee are served. Thirdly the Nairobi
Java house (the Appellant) is a chain of coffee houses and exporters founded in 1999 with the
head office in Nairobi and with a 14 year trading history. Fourthly the words "Java", "house",
and "Java Sun" are extensively registered and advertised and used. Lastly the Applicant has a
well-known mark upon the use thereof distinguishing the Appellant/Applicant‘s services.
The doctrine is that an ordinary word is not inherently capable of distinguishing services except
through use or distinctiveness generated by other factors. I have consequently gone back to the
foundation of the Respondent‘s registration in Part A to consider the word ―Java‖ or ―Javas‖. As
a preliminary background the second ground of appeal is that the Registrar committed a material
and distinct error of evaluation and principle in finding that the word Java is not a common
English noun that is synonymous with the business of coffee shops and restaurants. This is
connected to ground 3 as well as ground 4 of the appeal. It inherently affects registration in Part
A as well.