is written inside and on top of a rectangular box. It is immediately followed by the devise of a
sun depicted as a human face in the centre and below the word Nairobi. Thirdly this sun is
followed below it by the word JAVA. After the word Java there is a dash sign below that
resembles the sign ―-:-―. Thereafter there is yet below the words ―Coffee & Tea‖. The Registrar
also added the colours. The colour of the sun is in red. The words coffee and tea are also in red in
a yellow background. In the variation the Appellants trademark does not have the word Nairobi
on top but has the words JAVA HOUSE coffee & Tea.
The Respondents mark on the other hand has the words ―Cafe‘ Javas‖ with the devise of a
steaming cup above the letters ―as‖ in ―Javas‖. The word ―Cafe‖ is in black while the word
―Javas‖ is in orange. The Registrar, and correctly in my view concluded that there was no visual
similarity between the two marks namely that of the Appellant and that of the Respondent. His
words are: ―Visually the marks do not resemble‖.
In paragraph 40 of his ruling the Registrar noted some conceptual similarities because both
marks have the dominating element of the word ―Java‖. He considered the statutory declaration
of Mohammad Mohideen. On the question of whether customers referred to the restaurants of the
Respondent as ―Javas‖ he held that there was no evidence to this effect though he held that he
was inclined to believe Mohammad Mohideen on the probability that it was true because of the
―overshadowing impact of the word ―Java‖. His conclusion was that the rest of the words in the
trademarks used by the parties to this appeal were not distinctive. These were the words ―Cafe‘,
Nairobi, House, Coffee & Tea‖. It was the use of the word ―Java‖ in combination with the other
words that gave distinctiveness to the trademarks.
First of all from my holding that the word Java is an ordinarily word, that it is a geographical
place in Indonesia, that it refers to coffee and computer programming language and that this
word is associated with the business of trademarks, like the word ―Cafe‘‖ it can be used as a
descriptive term to refer to such business in class 43 where coffee is served. On the basis of that
holding, the registrar erred in law not to find that the word Java is a descriptive term as held
above and properly disclaimed by the appellant.
As far as likelihood of confusion is concerned there was no survey which had been conducted.
The opinion of two deponents was insufficient to reach the conclusion that the registrar reached