Many readers will recall that earlier this year the Registrar of Trade Marks in Uganda ruled in favour of Mandela Auto Spares in a matter filed to oppose the move by Nairobi Java House Limited to register trade marks containing the word JAVA in class 43 (restaurant services). The basis of the Ugandan company’s claim was that it was the registered proprietor of trademark numbers 29297 JAVAS in class 30; 40162, 47765, 47766, 47767 all CAFÉ JAVAS in classes 30, 21, 32 and 43 respectively. A copy of the ruling is available here.
This blogger has learned that Nairobi Java House now rebranded as Java House Africa is in the process of appealing the decision of the Registrar in the Commercial Court. In the meantime, Java House continues its aggressive expansion across East Africa and beyond, according to Reuters.
In the ruling, the Registrar of Trade Marks in Uganda defended the registrations of JAVA by Mandela Auto Spares by stating that the word ‘Java’ does not mean coffee shops – it means coffee or computer programs or an island which are totally different subjects. According to the Registar, the word ‘Java’ does not describe restaurants or even the relevant activity in this case which is provision of food and drink services. As a result, the Registrar stated that the fact that the mark describes coffee that is served in certain restaurants is not in itself sufficient to render the mark descriptive of the services themselves. Therefore the Registrar found that ‘Java’ is not a generic reference to coffee shops or restaurants.
On the crucial question of likelihood of confusion, the Trade Marks Registrar established that the test was whether a reasonable consumer of restaurant services will be confused or deceived, and will believe Java House’s goods or services come from, or are sponsored or endorsed by, Mandela Auto or that the two are affiliated. First, the registrar found that for purposes of the present matter, the “reasonable consumer” is an average person whether middle or upper class with average discernment necessary for restaurant services.
In determining how the provision of this kind of service would be discerned by the person who consumes these services, the Registrar found that although the two marks are not visually similar, they are some conceptual similarities that impact on the overall impression of the marks.
Overall the Registrar found that it is reasonable that a member of the public would likely be confused as to the source of both services and in this case Java House’s services would be confused for those of Cafe Javas bearing in mind that the latter has built up a reputation for over six years here in Uganda.
Many commentators have questioned Java House’s decision to continue using the JAVA mark at its Ugandan branches despite the fact that its applications for registration of its two trademarks “NAIROBI JAVA HOUSE” and “JAVA HOUSE CAFE” were refused. At this rate, this blogger reckons that the proprietors of JAVAS in Uganda would be at liberty to file an action seeking permanent injunction against Java House in the Commercial Court for infringement and passing-off despite Java House’s pending appeal.