Kenyan Java House Africa Triumphs Against Ugandan Cafe Javas in Crucial Trade Mark Court Case

Java House Africa Opens Grand Imperial branch Nile Avenue in Kampala Java House Coffee Shop Uganda Limited Photo by Sqoop

In a judgment delivered yesterday (February 9th 2016), the High Court of Uganda in Civil Appeal No 13 of 2015 has set aside the decision of the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB). Mr. Justice Madrama Izama allowed the appeal by Nairobi Java House Limited with costs and found that the two marks from Kenya and Uganda in question are capable of concurrent usage.

Readers will recall that in an earlier post here, we confirmed that Nairobi Java House had filed an appeal against the decision of the Registrar in relation to trade mark opposition proceedings filed by Mandela Auto Spares Limited. The proceedings were against the registration of trade mark application numbers 48062/2013 “Java House” and “Java Sun” and 48063/2013 “Nairobi Java House” in the name of Nairobi Java House. The Registrar in his ruling upheld the objection of Mandela Auto Spares Limited and found that the proposed registration of Nairobi Java House’s trade marks would lead to confusion in the marketplace.

The crux of the Nairobi Java’s argument before the High Court was that contrary to the view of the Registrar, the former has not appropriated the word “Java” from Mandela Auto’s “Cafe Javas” trade mark. Rather, Nairobi Java has, without modification, applied it as an English noun in the course of trade and in the trade mark law sense and has applied it descriptively as a component part to a more complex mark which is in totality distinctive of the goods and services for which registration is sought. In this regard, Nairobi Java faults the Registrar for failing to hold that the word “Java” was descriptive, and either not distinctive at all or of low distinctiveness in relation to the services the subject of the application and failing to properly address the fact that the word “Java” was therefore correctly disclaimed by Nairobi Java and qualifies for registration under sections 19 and 26 of the Uganda Trade Marks Act 2010.

The learned judge found that the Registrar erred in two aspects on a matter of fact. Firstly, he erred by failing to consider whether “Java” was a registrable word in Part A without need of proving distinctiveness after having established the word “Java” meant a geographical place in Indonesia. Secondly, the Registrar erred in not finding that the word “Java” is certainly associated with coffee and restaurants as shown by the evidence submitted by Nairobi Java. Therefore the Registrar erred in law by not applying section 26(1)(b) to find that the word “Java” which he held played a standout role was common to the provision of services of the description on class 43 of the Trade Marks Act 2010. The court found that the word “Java” is common to the services undertaken by both parties and that this word was properly disclaimed by Nairobi Java in terms of section 26 of the Trademarks Act 2010.

Interestingly, the court notes that none of the parties addressed the Registrar or the court specifically on the implications of the registration of Nairobi Java House’s marks in Kenya prior to its application in Uganda. In this regard, the court held that the Registrar ought to have taken into account the prior registration in Kenya by Nairobi Java as it was “the most material matter for consideration”. The court goes on to add that Nairobi Java may also be “faulted for not emphasising it in the objection proceedings”.

nairobi java house cafe javas uganda trade markWith regard to the prior registration in Kenya, the court states that since Kenya and Uganda are parties to the Paris Convention, it should be noted that sections 44 and 45 of the Uganda Trademarks Act (which domesticate some of the principles in the Paris Convention) provide that the mark registered first in time takes priority to a later trademark in case of resemblances. Section 45 further gives the court jurisdiction to remove from the Register a trademark which is registered after a foreign registered mark in case the mark registered in Uganda is identical with or nearly resembles a trademark of the plaintiff registered in a foreign country in respect of the same services and registered prior in time. Further, the court states that, in reference to Article 7 of the Treaty for the Establishment of the East African Community (EAC), the decision of the Registrar stifles free movement of services within EAC by restriction on the registration of a trademark registered prior in time in Kenya on the ground of registration of a trademark albeit registered later in time to Uganda.

On the issue of similarity of marks or likelihood of confusion, the court found that there was no survey which had been conducted and that the opinion of the two deponents was insufficient to reach the conclusion that the Registrar reached of confusion of members of the public. The evidence relied upon by Mandela Auto was the opinion of one customer and a newspaper article written by one Rita. According to the court, there was not evidence that Rita interviewed anybody and her comments were her own opinion.

In finding in favour of Nairobi Java with costs, the learned judge states:

“…the trademarks of the parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant [Nairobi Java] has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported”

On the issue of similarity of marks or likelihood of confusion, the court found that there was no survey which had been conducted and that the opinion of the two deponents was insufficient to reach the conclusion that the Registrar reached of confusion of members of the public. The evidence relied upon by Mandela Auto was the opinion of one customer and a newspaper article written by one Rita. According to the court, there was not evidence that Rita interviewed anybody and her comments were her own opinion.

In finding in favour of Nairobi Java with costs, the learned judge states:

“…the trademarks of the parties are visually very different. In case of association of the word Java through use or association to acquire distinctiveness the appellant [Nairobi Java] has been using the mark in Kenya since 1999 and the court is obliged to take this into account. In any case my finding on the evidence is that the two marks are dissimilar and the likelihood of confusion is not supported by evidence and therefore the conclusion of the Registrar is not supported”

A copy of the full judgment is available here.

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