Java House wins trademark case against Café Javas

Kampala. Kenya’s coffee shop chain Java House can now expand its operations in Uganda without the worry it would be infringing on the trademark of a competitor, Café Javas.
This, after a High Court ruling on February 9, 2016, compelled the Registrar of Companies to allow registration of the trademarks Java House, Java Sun and Nairobi Java House.”
The Uganda Registration Services Bureau (URSB) had rejected the registration of these trademarks after Mandela Auto Spares – owners of Café Javas – filed an objection.
URSB rejected the registration on the grounds that with entry of the Nairobi Java House in the market, it would lead to confusion by members of the public.

Java House appealed the decision on nine grounds and Justice Christopher Madrama Izama ruled in their favour.
“The registrar erred to rely on the evidence of Mohammad Mohideen after finding that there was no evidence of reference to the restaurants of the respondent (Café Javas) as Javas by an average or reasonable customer. Furthermore, the trademarks of parties are visually very different,” the ruling reads.

The ruling further reads: “In any case my finding on the evidence is that the two marks are dissimilar and likelihood of confusion is not supported by evidence and therefore the conclusion of the registrar is not supported.”
A key point of contention was whether there could be a trademark on the use of the word “Java” which Mandela Auto Spares had registered in Uganda.
However, the ruling by the court insisted that the word Java is commonly used globally in reference to services offered by coffee shops.

Java House operations
Java House has been in existence for the last 14 years running several coffee shops in Kenya.
They are also involved in the exportation of coffee in Kenya.
With its expansion into Uganda, the coffee shop chain was looking to tap into the emerging middle class and consumer trends in the country.

“The decision of the registrar stifles free movement of services within the East African Community (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 in Uganda,” the ruling goes on to read.
Notably, Justice Madrama faulted Java House for not emphasising the point of having been registered in Kenya before the Uganda entry.
However, he also pointed out that the EAC needed to “consider what to do with marks registered in another member state and sought to be registered in yet a different member state of the community.”

The case
August 15, 2013. Nairobi Java House files an application to register a trademark in Uganda.
October 24, 2013. Mandela Auto Spares files an objection to the application.
May 21, 2015. The registrar of Trademarks rules in favour of Mandela Auto Spares.
June 4, 2015. Nairobi Java House appeals the decision of the registrar.
February 6, 2016. High Court rules in favour of Nairobi Java House.

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