trademark is protected where there would be a likelihood of confusion on the part of the public
which includes a likelihood of association with the earlier trademark.
In his analysis of the two competing marks the Assistant Registrar correctly observed that when
placed side-by-side; there was no visual resemblance between marks.
The Registrar was supposed to assess the likelihood of confusion globally, taking into account all
relevant factors. Secondly the Registrar was supposed to appreciate the fact that an average
consumer perceives a mark as a whole and does not proceed to analyse its various details.
Thirdly to recognise that the visual, aural and conceptual similarities of two competing works
must be assessed by reference to the overall impressions created by the marks bearing in mind
the distinctive and dominant components but it is only when all other components of the
complex matter are negligible that it is permissible to make the comparison solely on the basis of
the dominant elements.
The Registrar misapplied the test in the evaluation of the word "Java" which is not a dominant
element in the Respondents trademarks 'Cafe Javas' because it simply does not exist as a
dominant element. It is an element in the Appellant‘s trademark and the dominant element is
actually the 'Sun' device. In visual comparison of the Appellant's trademarks and the
Respondents trademarks does not support the finding of the Assistant Registrar and therefore the
registration of the Appellants trademark would not offend section 25 (2) of the Trademarks Act.
Aural comparison
The Appellant‘s Counsel relies on the case of the Office of Harmonisation in the Internal
Market (OHIM) case C – 334/05 – P where the Court of Justice of the European Union decided
that in assessing two competing marks and the incident of likelihood of confusion, the Applicant
must carry out a global assessment of the likelihood of confusion of the marks in issue. He or she
does this in the context of consideration of the likelihood of confusion, assessment of the
similarity between two marks means more than taking just one component or a composite
trademark and comparing it with another one. The comparison must be made by examining each
of the marks in question as a whole. The Registrar erred in law by failing to consider the extent
to which the two marks would be used or perceived by the consumer aurally. The Registrar could
have arrived at the phonetics of the two marks. The Appellants Counsel went ahead to