The material facts of this appeal go back to the grounds of the decision of the Assistant Registrar
of Trademarks. The background to the decision is that the Appellant who is described as Nairobi
Java House Ltd in application number 48063, applied to register a trademark which includes
signs and the words "Nairobi Java House Coffee & Tea" on the 23rd of May 2013 for
registration in Part B class 43. The Applicants also put in a disclaimer on 28 August 2013. The
disclaimer is that the Applicant shall have no exclusive right to the use of the words ―Nairobi‖,
―House‖, Coffee‖ and ―Tea‖ except as presented in the trademark. Secondly by application
number 48061 for ―Java House Coffee & Tea‖ the Applicant applied for registration in respect of
coffee, tea, cocoa and others in class 42. As a matter of fact the gazette notices for registration of
trademark were published in respect of ―Nairobi Java House Coffee & Tea‖ on the 30th of
September 2013. The date of filing of the application is 15th August 2013 according to the
Gazette notice. The trade mark application in respect of ―Java House Coffee & Tea‖ was also
published on the same day. The date of filing the application was the 15th of August 2013.
An opposition to the application was filed by the Respondent to the above applications of the
Appellant which opposition was signed on the 24th of October 2013 by Mandela Auto Spares Ltd
the Respondent herein. The grounds of the opposition were also supported by a statutory
declaration of the Finance Manager of Mandela Auto Spares Ltd and Mr Mohammed Mohideen
and inter alia and in summary are that:
Mandela Auto Spares Ltd is the owner of the "Javas" trademark number 29297 registered
in class 30 in respect of coffee, tea, cocoa, chocolate etc on 3 November 2006 which
registration was renewed on 3 November 2013.
It is also the owner of trademark ―Cafe Javas‖ trademark number 40162 in respect of
coffee, tea, and cocoa, filed for registration on 17 July 2009 in class 30.
The Respondent is also the registered trademark owner of ―Cafe Javas‖ trademark
number 47762 in class 21 registered on 2 July 2013.
The Respondent is the registered owner of "Cafe Javas‖ trademark number 47766 in class
32 registered on 2 July 2013.
The Respondent is the registered owner of trademark number 47767 ―Cafe Javas‖ in class
43 registered on 2 July 2013.
The Respondent had adopted use of the trademarks about seven years or 10 years ago.