The battle over a brand name

William Shakespeare once remarked when asked the question; what is in a name? and in response said ‘A rose by any other name would smell as sweet’.

What is the likelihood of a consumer being confused between “Café Javas” and “Java Coffe and Tea?” My guess is that to the not so familiar, and this takes in the majority of consumers, most people would not be aware of the difference.

About eight years ago, the Mandela Group of Companies duly registered the name Café Javas as a trademark, and over the course of time, they have successfully built up the ‘Café Javas Brand’ with untold and impressive growth and results seldom seen in the industry.

From little acorns grow oak trees, and today the Java brand has morphed into no fewer than seven outlets with each new property outdoing the other in terms of smartness and appearance and yet with the same excellent service and expectations.

Needless to say, the brand “Café Javas” and “Javas Café’ became symbiotic and synonymous and who cared. After all, they were both one and the same and there was zero chance of ending up at the wrong address.

Regarding nomenclature, when people are in conversation, there is a tendency for them to abbreviate or shorten names.

To wit, few people would care or take the time to refer to the Serena Kampala Hotel preferring to call it simply the “Serena.” The same goes for the “Sheraton” and one can think of a myriad of similar examples far too numerous to mention here.

A year or so ago, a hitherto unknown operator going by the name of Java Coffee and Tea, decided to make a foray into the Ugandan market and accordingly set up shop in Bugolobi Village Mall. By any account the presence of this new entrant was not only a case of chutzpah of the highest order but was hostile .

I cannot imagine for instance, Henry and Jolly Ngabirano of Café Pap being amused by another operator setting up a joint and calling it Pap Café and Tea House and not taking offence.

Adding insult to injury, this new operator chose to use identical colours and signage as the original Café Javas and a menu that was almost similar in almost every way. Perhaps the most injurious cause was the serving of pork products. Whereas Café Javas observed strict Halal adherence, they dared serve pork.

On the May 21, 2015 the Registrar of Trademarks delivered a landmark ruling in favour of Café Javas prohibiting the registration of trademarks viz. Nairobi Java House & Tea and Java House and Java Sun owned by Nairobi Java House.

In his ruling the Registrar noted inter alia
The Registrar argued that visually and placed side by side, the marks differed.

However, there were some conceptual similarities that impacted the overall impression of the marks. Both marks handle word or letters ‘Java’ as a dominating element that played a very conspicuous role in the perception of the marks.

As submitted by Café Javas, it was probable that its restaurants were referred to as ‘JAVAS’ because of the over shadowing impact of the word ‘Java.’

Consequently, the word ‘Java’ maintained a standout role in the relevant marks so that there was a likelihood that the services of Java Tea and Coffee would be associated or otherwise regarded as related with Café Javas.

However, a likelihood of association was not enough to lead to a likelihood of confusion. Café Javas lead evidence to show that there were consumers who had been confused and not merely associate Java Tea and Coffee’s establishment and services to Café Javas.

Whether the confusion of these people was reasonable to be expected on an average member of the public, the answer was yes.

Further, the Registrar held that the lesser degree of similarity between the marks was offset by a greater degree of similarity with regard to the services. Both parties offered services in class 43 for providing food and drink.

A service is perceived not only by the physical features but also through the overall impression created by the food served, the ambience, décor, menus or otherwise the standard of service, the type of service, cost of service, manner of provision of the service and any other business practice and get up that distinguishes the provision of essentially similar services offered by that entity from other entities. The mark then embodies these features that constitute provision service by a particular.
Having visited both parties restaurant, the Registrar held that both had similar décor, colours, sitting arrangements, mode of dining, meal prices and similar locations. In other words, the surrounding circumstances in the provision of services made the establishments similar rather than different.

The most outstanding difference was that Java Tea and Coffee offered pork-based meals while Café Javas served strictly Halal meals. However, this difference was not significant enough to distinguish the services of the parties.

It was therefore reasonable that a number of the public would likely be confused as to the source of both services and in this case to the detriment of Café Javas since it was Café that had built a reputation in Uganda over the years.