That the word "Java house" is phonetically, confusingly, and deceptively similar to the
Mark "Javas".
That the proposed trademarks of the Appellant were not distinctive in terms of section 9
of the Trademarks Act 2010.
That the proposed Applicant‘s trademark is likely to deceive contrary to section 23 (1) of
the Trademarks Act 2010.
The trademark is identical or resembles the Respondent‘s trademark contrary to section
25 (2) of the Trademarks Act 2010 in respect of the same services.
In the statement in opposition it is pleaded that Trade Mark 40162 Cafe‘ Javas in class 30 in
respect of coffee, tea cocoa, sugar rice etc was filed on the 17th of July 2009. Trademark number
47765 in class 21 was filed on the 2nd of July 2013 advertised in the gazette on the 16th of August
2013. Trade mark 47766 Cafe Javas in class 32 was filed on the 2nd of July 2013 and published
on the 16th of August 2013. The attached evidence of documents include certificate of renewal
dated 8th of July 2013 in respect of TM 29297. Evidence by way of attached documents is that
trade mark ―Cafe Javas‖ was registered in Part A on the 15th of November 2010.
In the counter statement by the Appellant to the Respondent‘s objection the Appellant inter alia
wrote and produced evidence of the following grounds in support of the application namely that:
The name "Java" is not an original coinage that can be used exclusively by one person.
The word "Java" refers to "coffee" and the place where variations of coffee are served.
Nairobi Java house (the Appellant) is a chain of coffee houses and exporters founded in
1999 with the head office in Nairobi and with a 14 year trading history.
The words "Java", "house", and "Java Sun" are extensively registered and advertised and
used.
The Applicant has a well-known mark upon the use thereof distinguishing the
Applicant‘s services.
The Appellant further contended that there were material visual and phonetic
dissimilarities between the Applicants/Appellants marks and those of the Respondent.
Without prejudice the Applicant averred that its marks were capable of honest and
concurrent use with that of the Respondent.