distinguish goods with which the owner of the trademark is or may be connected,
in the course of trade, from goods in the case of which no connection subsists; or
(b) in the case of a trademark relating to services, adapted in relation to services in
respect of which the trademark is registered or proposed to be registered, to
distinguish services with which the owner of the trademark is or may be
connected in the course of trade, from services with the provision of which he or
she is not connected, generally or, where the trademark is registered or proposed
to be registered subject to limitations, in relation to use within the extent of the
registration.
(3) In determining whether a trademark is adapted to distinguish as goods or services, the
Registrar or the court may have regard to the extent to which—
(a) the trademark is inherently adapted to distinguish goods or services; and
(b) by reason of the use of the trademark or of any other circumstances, the
trademark is in fact adapted to distinguish goods or services.‖
Section 9 (1) makes it essential that the trademark shall contain one of the essential
characteristics. In relation to the Respondent which is a limited liability company the name of the
company or the signature of the Applicant or and invented word or words. The first three
considerations do not apply to the Respondent. The trademark ―Cafe‘ Javas‖ does not have the
company name of the Respondent which is Mandela Auto Spares Ltd. Secondly it does not have
the signature of the Applicant. Thirdly it does not have an invented words or words unless we
accept that the word ―Javas‖ is not ―Java‖. I will therefore consider the other parts of section 9
(1) namely (d) and (e). As far as item (d) is considered the trademark may consist of a word or
words having no direct reference to the character or quality of the goods or services, and not
being according to its ordinary signification, a geographical name or a surname. In other words
the words ―Café Javas‖ had to have no direct reference to the character or quality of goods or
services in respect of which it is registered. Secondly it should not be a geographical name or
surname. The word Java is a place in Indonesia and is a geographical name referring to an Island.
Secondly from the Registrars ruling it is also means coffee. The word Café means coffee.