In a statutory declaration in support of the counter statement by Kevin Ashley the Group
Chief Executive of the Appellant it is further deposed that:
o The Applicant has a 15 year trading history.
o The trade Mark registered as "Nairobi Java house coffee & tea" was registered in
class 30 under trademark number 50133 in Nairobi Kenya on the 8th of May 2000
and in respect of coffee, tea, foodstuff, and bakery products etc.
o Under trademark 63904 registered class 11 on 20 August 2008 it was also
registered for lighting appliances, heating, steam generating, cooking as well as
provision of foods and beverages etc
The decision of the Registrar clearly relies on the evidence considered above in the statutory
declarations. The summary of evidence by the Registrar demonstrates that the Assistant Registrar
did not take into account the prior registration of the Appellant in Nairobi Kenya in respect of the
same trademarks sought to be registered in Uganda. This influenced the legal basis for
consideration of the issues in the application for registration.
In the consideration of the issues the Assistant Registrar took into account the fact that the
opponent or the Respondent to this appeal is a registered owner of the trademark "Cafe Javas"
with the devise of a smoking (steaming) cup over the right side of the word ‗Javas‘ and is
registered in class 43. The opponent's case is that it had been using the marks on restaurant
services which are the same services for which the Applicant is seeking registration of their
trademark. On the other hand the Applicants sought the registration of the Mark "Nairobi Java
house" with the devise of a face in a sun in respect of the same services in class 43 as well. Class
43 deals with 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. In other words the Registrar 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. The Assistant
Registrar further considered the meanings of the word "Java" to mean coffee or an Indonesian
island or a computer programming language. He held that from the Applicant‘s evidence the
word "Java" does not disclose restaurants or even relevant activity which is the provision of food