between the parties. The ruling was to the effect that the Appellant could reformulate its grounds
of appeal provided the substance of the grounds in the notice of motion is maintained. In the
premises the Appellants‘ Counsel merged arguments under grounds 1, 2, 3, 4, 5, 6 and 7 in the
following heads of argument:
1.4.1 The Assistant Registrar's failure properly to compare the respective signs and marks, and
specifically his failure to compare them (a) aurally at all, and (b) conceptually as a whole;
1.4.2 The Assistant Registrar‘s error in treating the Appellant‘s trademarks and trademark
numbers 40612, 47765, 47766 and 47767 'Cafe Javas' ("the Respondent‘s trademarks") as mere
word marks;
1.4.3 The Assistant Registrars failure to hold that the word 'Java' was descriptive and either not
distinctive or of low distinctiveness in relation to the services the subject of the application and
failure properly to address the fact that the word 'Java' had therefore correctly been disclaimed;
1.4.4 The Assistant Registrar‘s failure to find that there was no material similarity between the
Appellant‘s mark and the Respondents trademarks that would lead to likelihood of deception
and/or likelihood of confusion within the average consumer of the respective goods and services
covered by the Appellant‘s trademarks and the Respondent‘s trademarks;
1.4.5 The Assistant Registrar‘s erroneous consideration of irrelevant matters when assessing
whether there was a likelihood of confusion, and in particular erroneously giving any weight to
the "factual evidence of confusion" and the similarity in the getup of the actual premises and
businesses operated by the Appellant and the Respondent respectively; and
1.4.6 The Assistant Registrar‘s erroneous reliance on an evaluation of inadmissible evidence,
thereby leading to the wrongful refusal of registration of the Appellant's trademarks.
The Appellant's Counsel submitted that an appeal against the decision of the Registrar of
Trademarks is to be allowed where it is shown that the Registrar had committed a distinct and
material error of law, principle or evaluation, and where there has been an improper exercise of
discretionary powers.