Foreign languages are popular marketing tools to imply authenticity and evoke associations with exotic places. Yet to register any such words as trade marks, they must be distinctive and non-descriptive – to ensure fair trade mark 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 trade mark protection for coffee: the words are Italian for “gold” and “five stars”. Despite the words not being commonly understood in Australia, the court stated that they were merely descriptive laudatory terms and thus did not warrant protection as it would unnecessarily prohibit competitors in an industry that draws heavily 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 (on reference from Belgium), is: given that Arabic is not an official EU language, must the court analyse the meaning and pronunciation of an Arabic word within a trade mark when deciding its suitability as a European Community trade mark (CTM)?
Potentially, yes, as it otherwise risks opening up a loophole and granting monopoly use without fully understanding the breadth of the mark.
It risks, for example, an application for the Arabic word, “قهوة” (meaning “coffee” in Arabic) being allowed for coffee, which appears distinctive in Europe yet is purely descriptive of the goods. With consumers capable of quickly learning what they want (e.g. a venti chai latte) and the increasing popularity of international goods, such a mark could unfairly restrict competitors. Absurdly, it could even allow the owner to argue against others using the translation for “coffee” too, using the recent untested case law below.
An English company’s application to register its company name “GOLDEN BALLS” (for clothing) was opposed by the owner of the CTM “BALLON D’OR” (FIFA’s award for footballer of the year) as the words are a close translation. At first instance, it was determined that the words had a low degree of similarity, visually and semantically (i.e. in what they mean and evoke) so the mark “GOLDEN BALLS” was allowed. This was appealed though and it remains for the court to determine if the new mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier “BALLON D’OR” mark.
These cases highlight the importance of completing adequate checks and searches prior to selection of a mark. This is also important, ironically, in avoiding choosing inappropriate marks that jeopardise international sales. Car manufacturers have felt this acutely as various car names have been wholly unsuitable abroad – e.g, Chevrolet’s Nova, which unfortunately means “does not go” in Spanish.
Businesses should therefore take heed: foreign words should be selected, used and registered with caution. When chosen wisely they can add flair and authenticity, but when chosen poorly they can produce unintended consequences in the marketplace and the courts.
Tara Sarwal, associate in the London office at global legal practice, Norton Rose Fulbright