On the above grounds the Appellant‘s Counsel submitted that the Assistant Registrar committed
a further distinct error in failing to find that the word "Java" is descriptive in relation to the
services and had therefore been correctly disclaimed. This is based on the failure to appreciate
the status of the word "Java" as a common noun that is synonymous with the business of coffee
shops and restaurants. Secondly the Assistant Registrar failed to recognise that the Appellant
seeks to register and use the Appellant‘s trademark in a disclaimed and non-exclusive manner.
Counsel further submitted on the Appellant‘s entitlement to register the word 'Java 'in its own
right and as a descriptive word.
The Appellants Counsel submitted that the Assistant Registrar misconstrued his arguments. The
Appellant had argued that the word is a trade descriptive word. The Appellant never sought to
contend that the word "Java" was generic in respect of the goods and services for which
registration was sought. However in the decision, the Assistant Registrar arrived at the
conclusion that the word Java is not a generic term in respect of the goods and services for which
registration was sought. He failed to appreciate the Appellant‘s contention and further erred in
law failing to have regard to the meaning, nature and effect of a descriptive word within a
trademark. Descriptive marks are marks that describe either the goods or a characteristic of the
goods in its primary sense. Generic terms as secondary meaning words that are accepted and
recognised description of the class of goods or services having displays of the primary meaning
over a period of time. The Appellant had at all material times relied on the word "Java" as a
descriptive term.
The Appellants Counsel further submitted that the word "java" is a common noun and a trade
descriptive word which qualify for registration subject to restrictions contained in sections 19
and 26 of the Trademarks Act. Secondly the word "Java" is an English word and not an invented
word. It has three well-known meanings. The first meaning is that it means "coffee". The second
is that "Java" refers to the large island in Malay Archipelago forming part of Indonesia. Thirdly
the word "Java" refers to a general-purpose programming designed to produce programmes that
would run on any computer system.
On those grounds contrary to the reasoning of the Assistant Registrar, the Appellant has not
appropriated the word "Java" from the Respondents "cafe Java's" trademark. The Appellant