Language Marks in Trademark Law

The following discussion is based on the concept of the doctrine of foreign equivalents which gives rise to the terminology of language marks. This is a new concept in trademark law and is looked into seriously by MNCs. There is also an emphasis on the country of India which has numerous languages, and is a place which is ripe for such controversies to arise.

Language Mark and Doctrine of Foreign Equivalents

The concept of language mark is based on the “Doctrine of Foreign Equivalents.” As international boundaries continue to weaken, especially in the age of cyberspace, the Doctrine of Foreign Equivalents has acquired greater importance. Owners of foreign language marks need to exercise particular caution when contemplating the expansion of their brands, especially into the markets of the United States of America.

Under the United States trademark law, the “Doctrine of Foreign Equivalents” was developed to address the situation in trademark infringement cases when the matter concerns a trademark designating a product in a language other than English.

Under this doctrine, the courts will translate foreign words used as trademarks into their common English meaning in usage to determine whether they are generic or descriptive, as well as whether they are confusingly similar to an English word mark.

Good examples are those of refusal to register the mark SONOP for alcoholic beverages. The basis of rejection was the mark SUNRISE registered (in respect of wine re Savisa (Pty) Ltd. , 2005 TTAB LEXIS 91) and refusal to register BUENOS DIAS for bar soap which was held likely to be confused with GOOD MORNING and design for latherless shaving cream.[1]

There are two major concerns as regards the above mentioned Doctrine. The first concern is whether the foreign language word comprising the brand has a particular meaning in English. The second concern is whether there exists a prior United States Trade Mark filing or common law use for a mark that is identical or confusingly similar to the foreign brand.

Case Laws on Trademark Protection for Generic Terms

The test as regards this doctrine is whether to an American buyer familiar with the foreign language, the word would refer to its English equivalent. There are numerous cases which will make the above mentioned clearer.

They are as follows: In the landmark judgment of Orto Conserviera Camoranese D Giacchetti Maino & CSNC and Penta International Inc. v. Bioconserve SRL and Beller D. Cerignola Inc. SDNY (in re American Safety Razor Co., 2 USPQ 2d 1459) , the mark in dispute was the Italian term “Belle di Cerignola.”  What was contested between the parties was whether the term had become a generic designation for this particular type of olive. The defendants argued that the term “Belle di Cerignola” had not yet become generic in the United States of America. However just as bestowing trademark protection for generic terms in English is impermissible because competitors will not be able to describe their goods as to what they are; trademark protection for foreign generic words has also been denied over the years.

Yet another judgment of great importance is that of Otokoyma Co. v. Wine of Japan Import Inc (Cir. No: 97 -9611, 4/29/99). The question was as regards the generic character of the term “Otokoyama.” The plaintiff brought its infringement suit after the defendant; an importer began selling a brand of sake known as Mutsu Otokoyama in the United States of America.

The doctrine of foreign equivalents was held to provide sufficient basis for reversing a preliminary injunction granted earlier. Both the abovementioned cases re-affirm the importance of the Doctrine of Foreign Equivalents. This rule demands that any analysis of foreign language marks be based on their accepted usage.

In the case of In re Thomas (Serial No: 78334625) the matter was as regards to the Black Market Minerals registration. The Board noted that MARCHE NOIR is a French term that the Applicant translated into English as “Black Market”. The doctrine is applied when it is likely that the ordinary American purchaser would stop and translate the term into its English equivalent. The ordinary American purchaser means the ordinary American who is knowledgeable in the foreign language. Contrary to the Board’s holding in this case in 2005, the Board and the Court of Appeals for the Federal Circuit (CAFC) held that the ordinary American purchaser means the ordinary American purchaser generally not one knowledgeable in the foreign language. A point to be noted is that this Doctrine is not normally invoked if the marks alleged to be confusingly similar are both foreign words. (Refer Safeway Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ 2d. 1980, 9182 (ITAB 1987)

Now when we look at this concept from the perspective of our country, we find the doctrine can be put to use in India as well. For example, Coco cola can be written in Hindi. This would amount to it being phonetically similar to the well known Trade Mark “Coco Cola.” There are numerous marks which can be translated into Hindi or any of the other languages that are in existence in our country and thus infringing well known Marks. They would all be considered as being phonetically similar to another well known mark.

In conclusion, there has been an increase in commerce between various countries of the world. In such an environment the concept of Trade Marks will keep on expanding. India must ensure that they adopt these new concepts and make them applicable to their country so as to strengthen their Trademark Laws.

[The authors of this post are V.C. Mathews and Jaan Boban.] [V.C. Mathews is a lawyer by profession, with expertise in intellectual property rights.]  [Jaan Boban is a fifth year student at the Symbiosis Law College.]