demonstrate the phonetics of the two competing trademarks. The Appellant‘s Counsel submitted
that the Assistant Registrar failed to find that the respective marks did not resemble each other
aurally or phonetically
Conceptual comparison
The Appellant‘s Counsel further contended that the Assistant Registrar held that there were some
conceptual similarities in the word 'Java' in the dominating element. However this was an error
because the key starting point is not mere word marks. The marks should be viewed as a whole
and not by reference to one element. In other words all the words have to be considered together.
The Appellants Counsel further criticises the Assistant Registrar for considering both word
marks to contain additional matter and therefore not being distinctive incident considering the
whole trademark. He contended that the Assistant Registrar completely ignore the visual images
which contributed to the conceptual meaning of each of the respective marks. Furthermore the
Assistant Registrar observed that the words "Nairobi", "house" and "coffee and tea" are all
subject to disclaims because they are all, one in the provision of specified services or otherwise
not distinctive. From those premises he held that it is the word "Java" which gives the
Appellant‘s mark the capability/adaptability to distinguish, and the word "Java" in the
application was unnecessarily disclaimed. The Assistant Registrar failed to observe the
inconsistency of the finding that the word "Java" is also at least as common as "Nairobi" and
"house" in relation to such services and "Java" was also disclaimed by the Appellant and yet the
Assistant Registrar held that the word "Java" is a distinctive word.
The Appellants Counsel further submitted on the following issues:
The Assistant Registrar's failure to hold that the word "Java" was descriptive and either not
distinctive or of low distinctiveness in relation to the services, the subject matter of the
application and his failure properly to address the fact that the word had therefore correctly been
disclaimed.
Secondly the Assistant Registrar's failure to find that there was no material similarity between
the Appellant‘s Mark and the Respondent‘s trademark.