KENYA – Coffee chain Java has won a protracted court case against Ugandan firm Mandela Auto Spares for the use of its trade name in the neighbouring country.
Java moved to the Uganda High Court after Mandela Auto Spares, which operates another eatery by the name Café Javas in Kampala and Entebbe, successfully objected to the registrar of trademarks’ acceptance of the Nairobi Java House name.
The High Court in Uganda has given the coffee house a go-ahead to register its Nairobi Java House Limited name as a trademark and to operate its restaurants under the same name.
Justice Christopher Izama on Tuesday ruled that no evidence had been produced to prove that customers can easily confuse the two eateries.
The judge also held that the two trademarks are easily distinguishable hence both can be registered and used by different firms.
“As far as likelihood of confusion is concerned, there was no survey which had been conducted. Furthermore, the trademarks of the parties are visually very different. A consequential order issues compelling the registrar to allow the registration of Nairobi Java House’s trademark application,” Justice Izama ruled.
Java had faulted Uganda’s registrar of trademarks for finding that Java is not a common English noun, arguing that it can be used to describe coffee, a computer application or an Indonesian Island by the same name.
Mandela Auto Spares is the registered trademark owner of the name Javas in Uganda. It held that the ordinary Ugandan could easily confuse it with the Nairobi Java House name.
“The registrar committed a distinct and material error of evaluation of principle in not properly construing the dictionary meaning of Java and the commercial use of the word Java,” Nairobi Java House said in its appeal.
Nairobi Java House opened its 45th outlet in Nairobi’s Reinsurance Plaza in November last year. It has announced plans to expand in the neighbouring countries.
The coffee house’s annual revenue last year hit Sh3 billion following a massive expansion drive that saw it open in other towns like Kisumu, Nanyuki, Nakuru, Eldoret, Thika and Kampala.
The turnover includes sales recorded by 360 degrees Pizza and Planet Yoghurt, a frozen yoghurt shop, under the Java group.
Justice Izama faulted the registrar of trademarks for not taking Nairobi Java House’s earlier registration of its mark in Kenya, but considered it in his determination of the matter.
“It is my holding that the registrar did not take into account the prior registration in Kenya of the appellant yet it was the most material matter for consideration. Perhaps the appellant (Nairobi Java House) too can be faulted for not emphasising it in the objection proceedings,” Justice Izama added.