ICT Policy Africa

from Borneo by the Java Sea. Secondly it is a trademark for programming language used to
develop applications that can operate on different platforms according to the American Heritage
Dictionary of the English language, Fifth edition © 2011 by Houghton Mifflin Harcourt
Publishing Company. Several other definitions I have searched from the internet give the three
variations namely it is a geographical place in Indonesia (an Island), it refers to coffee or
computer programming language. The Registrar erred in law not to apply section 26 (1) (b) to
find that the word ―Java‖ which he held played a standout role was common to the provision of
services of the description on class 43 of the Trademarks Act 2010.
Going back to section 9 of the Trademarks distinctiveness has a statutory definition. It means
under section 9 (2) (b) in relation to provision of 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.‖ The exact same words under section 10 of the Trademarks
Act are used for distinctiveness. The word ―Java‖ in case it is considered after overcoming the
issue of prohibition of the registration of a geographical name could be registered upon obtaining
evidence of distinctiveness. I note that it was registered anyway and it is not in controversy as to
whether it is registrable.
Last but not least in determining whether the mark has been adapted to distinguish goods or
services the court or Registrar shall have regard under section 9 (3) of the Trademarks Act to the
extent to which 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.
My conclusion is because the word ―Java‖ is common to the services the Appellant is
undertaking and which the Respondent also does grounds 2, 3 and 4 of the Appellants grounds in
the notice of motion are allowed. I further wish to add that the word ―Java‖ was properly
disclaimed by the Appellant in terms of section 26 of the Trademarks Act 2010.