Introduction
Facts
Decision
Comment


Introduction

Unlike in the United States, brand names in foreign languages are not automatically protected in Canada. No "doctrine of foreign equivalents" exists to expand a brand owner's monopoly across linguistic lines. This leaves even famous marks vulnerable to poaching, with translations of well-known brands like KRAZY GLUE swiped from owners in the past.

Still, a recent case involving Coca-Cola shows it is possible to cross the language barrier with the right protections.

This article explores strategies to help brand owners keep control of their key trademarks in all languages.

Facts

In 2017, an applicant based in China applied to register the logo shown in Figure 1(1) for use in association with a variety of food & drink products, including soft drinks:

Figure 1: applied-for mark

The characters in the mark are Chinese, transliterating to "pan pan" and meaning "hope for; long for; expect; look".

The application was opposed by Coca-Cola.

Decision

In the ensuing case of Coca-Cola Limited v Fujian Panpan Foodstuff Co, Ltd,(2) the Trademarks Opposition Board agreed there was a risk of confusion and refused the application. In the key passage, it wrote:

While the characters in the Applicant's Mark would not be recognizable to a unilingual English, unilingual French or bilingual English/French consumer … given the composition of the Mark as a whole, a Canadian consumer may think that the Mark is simply one of the Opponent's trademarks depicted in another language. (Emphasis added.)

Importantly, it was not the word mark COCA-COLA that won the day. The company's success was instead based "primarily" on the "wave design" logo it had registered as an independent trademark in 1992 (Figure 2).

Figure 2: wave-design logo

Coca-Cola's registration for its signature logo, shown in Figure 3, gave the company a second basis to successfully oppose the application.

Figure 3: Coca-Cola signature logo

The Board found there was also a risk of confusion when the full logo was considered, as the Chinese characters in the applicant's mark were depicted in a similar font to that used by Coca-Cola.

Comment

The Coca-Cola case stresses the importance of seeking trademark protection for more than just a brand name.

Anything that can identify a company – or cause trouble if misappropriated – should be registered and protected as a trademark. This includes:

  • logos;
  • components of logos;
  • slogans;
  • colours;
  • product shapes;
  • packaging; and
  • sounds, textures and even smells.

This scenario also highlights the benefit of robustly monitoring the landscape for problematic trademark applications involving brand elements that are protected, or that could pose a threat or be easily confused with protected marks. Nowhere in the refused application referenced above do the words "COCA" or "COLA" appear, meaning a simple keyword search would not have brought the mark to the company's attention.

Finally, brand owners should consider whether it is worthwhile to use and register their keyword marks in foreign languages. There is no "doctrine of foreign equivalents" in Canada. While generic names of goods and services cannot be registered in any language, translations of brand names are not automatically protected. In the most famous case, a third party gained rights over the Spanish name for KRAZY GLUE ("KOLA LOKA") as the court found there was "no resemblance whatsoever" between the two trademarks in appearance or sound (Krazy Glue Inc v Group Cyanomex SA de CV).(3)

That said, Canada recently added "bad faith" as a new ground to oppose applications (for further details, see "Trademark troll loses registration after appropriating well-known mark"). Whether the purposeful adoption of a translated mark constitutes bad faith is a question yet to be determined.

In this age of counterfeiting and trademark trolls, brand owners are right to ask whether their trademark portfolio will protect them against clever knock-offs and foreign translations. Protecting all indicators of the source is the surest method of defence in protecting brands.

For further information on this topic please contact Kohji Suzuki or Reagan Seidler at Smart & Biggar by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar website can be accessed at www.smartbiggar.ca.

Endnotes

(1) No. 1874390.

(2) 2020 TMOB 179.

(3) (1992), 45 CPR (3d) 161 (FCTD).