I have checked the evidence and dictionary meanings relied on. Among the evidence considered
is that ―Java Coffee‖ refers to coffee beans produced in the Indonesian Island of Java. Several of
the Café Java or Java Café hits on the internet search relied on by the Appellant and referred to
by the Registrar of Trademarks refer to restaurants in the USA, Australia and UK among others
and where among other things coffee is served. I have also considered the conclusion of the
Registrar.
He held that Class 43 under the Trademarks Act applies to services for providing food and drink,
restaurant, catering services, booking and reservation services for restaurants. The Registrar then
dealt with the issue of descriptiveness of the two trademarks. He considered whether the word
"Java" in the Applicant‘s proposed trademark sought to be registered was capable of registration
on the ground that it is not capable of distinguishing services of the opponent because the word
"Java" is or has become synonymous with coffee shops and restaurants worldwide. He thereafter
restricted it to Uganda. The Assistant Registrar considered the internet evidence attached to the
affidavit of Kevin Ashley. He found that the word "Java" meant coffee or an Indonesian island or
is used in a computer programming language. However the evidence did not prove that the
"Java" is associated with restaurants or even relevant activity which is the provision of food and
drink services. He found that the word "Java" is used by all kinds of enterprises including
restaurants. The Internet evidence submitted by the Applicant only showed that different
restaurant enterprises are using the word "Java" in their trademark representations and this was
meant to distinguish the services and not to describe them. The fact that the trademark described
coffee that is served in certain restaurants is not in itself sufficient to render the word ―Java‖
descriptive of the services themselves. The word "Java" is therefore not a generic reference to
coffee shops or restaurants.
From the evidence and ruling the Registrar erred in two aspects on a matter of fact. Firstly he
rightly established that the word ―Java‖ meant a geographical place in Indonesia. Was it
therefore a registrable word in Part A without need of proving distinctiveness? Secondly he erred
not to find that the word ‗Java‖ is certainly associated with coffee and restaurants. This is exactly
what the attached evidence shows. In the evidence the words ―Cafe‖ and ―Java‖ are ordinarily
used in association in the business of coffee and coffee drinks. Specifically the word ―Java‖ is
colloquial for ―programming language‖ or ―Coffee‖. Java is an Island of Indonesia separated