Foreign languages are popular marketing tools to imply authenticity and evoke associations with exotic places. Yet to register any such words as trademarks, they must be distinctive and non-descriptive - to ensure fair trademark protection without unfairly prejudicing competitors. If only it were that simple.
In Australia, after some deliberation, it was determined that the words ‘Oro’ and ‘Cinque Stelle’ were unsuitable for trademark protection for coffee: the words are Italian for ‘gold’ and ‘five stars’. Despite the words not being commonly understood in Australia, the court stated they did not warrant protection as it would unnecessarily prohibit competitors in an industry that draws on Italian links.
This was a fairly common-sense decision, but the answers are harder when marks have established reputations or are not written in the Roman alphabet.
A question currently awaiting answer at the European Court of Justice is: given that Arabic is not an official EU language, must the court analyse the meaning and pronunciation of an Arabic word within a trademark when deciding its suitability as a European Community trademark?
Potentially, yes, as it risks opening up a loophole and granting monopoly use without fully understanding the mark. It risks, for example, an application for the Arabic word for coffee being allowed for a coffee brand. Such a mark could unfairly restrict competitors. Absurdly, it could even allow the owner to argue against others using the translation for the word ‘coffee’ too.
So it’s important to complete adequate checks and searches prior to selection of a mark. A poorly chosen mark might even jeopardise international sales. Car manufacturers have felt this acutely as various car names have been unsuitable abroad - Chevrolet’s Nova, for example, which unfortunately means “does not go” in Spanish.
Foreign words should be selected with caution. When chosen wisely they can add flair and authenticity, but they can produce some unintended consequences - in the marketplace and the courts.
Tara Sarwal is associate in the London office of Norton Rose Fulbright
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