- For countries that either do not have English as their first language and/or use non-Latin characters, such as Arabic or Japanese, it is important for international brand owners to ensure that sufficient trade mark protection is in place for both the Latin and local language versions of their trade marks.
- The most appropriate strategy for brand owners depends on several factors, including their available budget, applicable local practices and procedures in each country of interest, and their overall strategic objectives.
- In this article we give you a breakdown of the key issues to consider when looking at new territory brand expansion in the context of trade marks.
While English is a commonly understood language in many countries of the world, it is not necessarily the first language of those countries. Furthermore, the relevant first language may not necessarily use Latin characters (the letters A to Z) of English, and instead may use non-Latin character languages such as Arabic, Cyrillic, Korean or Japanese, to name but a few. In some highly populated countries, such as China for example, comparatively few people may have an understanding of English at all, and this can present an issue for some brands.
For brand owners operating in these countries, or intending to launch brands there, consideration of the first language of the countries should be part of the business’ preliminary growth planning stages.
In the majority of cases, the decision to register a local language translation/transliteration of a trade mark is a result of a strategy to use both the Latin and non-Latin versions of the trade mark to establish and grow market recognition. For some countries, where it is mandatory to include local language translation/transliteration, for example, on goods for human consumption, on pharmaceuticals, or as part of the external signage on retail outlets, the use of non-Latin versions of the trade mark(s) is not discretionary.
In both instances, trade mark registration is recommended for the Latin and non-Latin versions of a trade mark covering all goods or services offered under the trade mark. In practice, the actual applications filed, whether in Latin or non-Latin form, will often be determined by additional factors, such as available budget and the extent to which protection is granted under national laws to Latin character trade mark registrations. Paying attention to these factors for each country of interest is therefore a must before any brand rollout.
Branding in a global marketplace
Many brand owners face increasingly limited budgets for legal spend but, with the continued growth of online shopping, 'drop shipping' and 'fulfilment services' and an increasing familiarity by consumers with e-commerce, there now is a level of access to markets around the world which was not available even just ten years ago. Achieving a balance between the drive to expand a brand and trade mark protection is essential and should be assessed at all levels of the business in good time before a brand launches into these countries.
Unfortunately, the ease with which information on brand expansion can be accessed by third parties (such as online research, company reports, information forums and patterns of trade mark filings in certain countries, for example) means there is an increasing risk of non-brand owners having filed local language versions of trade mark to seek to obtain some benefit from the brand owner when they eventually choose to expand into that particular country.
Attainment of such benefit can range from a typical 'offer for sale' of the local trade mark registration to the brand owner, to more sophisticated exploitation tactics such as threats of trade mark infringement or utilising customs and local enforcement authorities to either interrupt the shipment and sale of the brand owner's products, or perhaps as leverage to negotiate their own appointment as a local agent or distributor of the brand owner in the country.
What additional protection is available?
The national trade mark laws of many countries enable a trade mark registered in Latin characters to be relied upon to take action against third party use or registration of a translated/transliterated form of the same trade mark.
Where a third party has managed to secure a registration for the translated/transliterated form of the trade mark, some countries allow a cancellation action to take place before the national trade mark offices, whereas other countries, particularly in the Middle East, require that the cancellation action is brought before the courts, which can be time consuming and costly.
As a general principle, it is often far simpler and more cost-effective for brand owners to rely on their own registration of the translated/transliterated form of the trade mark in the first place when having to take action against third parties.
To the extent that trade marks of a particular brand are to be used under a licence, franchise or distribution agreement, the brand owner securing registration in the relevant territories and in the various forms of the marks (be they in stylised font, with a logo or in transliterated or translated form) enables retention of control of its trade mark portfolio and clearly identifies which trade marks are the subject of such third party rights.
We strongly recommend therefore that any trade mark filing program takes account of both the Latin and non-Latin variants of the trade marks to be used in a particular country, whether directly by the brand owner, or by a licensed third party.
Translation or transliteration?
Translation is the selection of the local language term which has the identical meaning of the term in the original language. In contrast, transliteration is the conversion of the original language term into an identical sounding term in the local language.
It is essential that any translation or transliteration of marks is undertaken through experienced translators to ensure that the most accurate result is obtained. This is particularly the case with languages such as Arabic, which can be subject to dialect differences depending on the particular country. By ensuring that a single translation/transliteration is obtained, a multi-country trade mark registration program for the mark, and the use of that trade mark in the marketplace, will be consistent.
In addition, experienced translators will often be able to advise of particular issues that may arise with a translation or transliteration in a particular country. For example, the translation or transliteration may result in a term that sounds very similar to another term, and this is likely to be undesirable for brand owners. Even worse, the translation or the transliteration could produce a result which offends cultural or other local sensitivities.
Careful translation or transliteration by a specialist can avoid the time and expense of product recall and rebranding and, in this age of social media, avoid the potential adverse effects of widespread and rapid negative publicity arising from a translation or transliteration error.
As with Latin version trade marks, pre-filing clearance searches are recommended for any translated/transliterated forms of a trade mark to ensure there are no prior third party marks that could pose a risk to either use or registration.
Filing for stylised form/logo form?
It is well-known that many brands use stylised fonts, logos or a combination of each for their trade marks in Latin characters. What is less well-known is that the use of stylised, logos or a combination of each is often used in the non-Latin variants of these trade marks.
This practice not only ensures brand consistency across multiple languages, but also reinforces the consumer’s connection between a particular trade mark and the goods or services offered under that mark in different markets. This goes to support the essential function of a trade mark as a source identifier or 'badge of origin'.
Where a decision has been made to adopt a translated/transliterated form of a trade mark for a particular country, we recommend that registration takes place for the basic form of the mark (so in plain block font) and also for the stylised forms of the mark or variants incorporating any logos.
In some instances, it may be that a translated/transliterated form of the trade mark is registered for only some goods or services in a particular country, while registration for the Latin form of the mark is broader in scope.
The most appropriate strategy will depend on lots of factors specific to your business, but what is unvarying, is the underlying need for your business to identify and evaluate all of these aspects, ahead of introducing your brand to a new market.