“A different language is a different vision of life”: Federico Fellini
A language is the mirror through which you can see and learn the soul of a nation. The language breaks the barrier of communication and established an atmosphere where the welfare of people flourishes. The language may also some time create confusion in case of trademark registration as there are various words which may be generic in one language and applied for registration in a country where people are not familiar with the language or vice versa. In this kind of situation the doctrine of foreign equivalent comes into picture wherein foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.
The use of doctrine in US
The doctrine is prevalently used time and again by US Courts when the questions were raised regarding the registration of trademark which is in a foreign language. In Palm Bay Imports, Inc v. Veuve Clicquot Ponsardin Maison Fondee EN 17721, in the original case the Board held that Palm Bay's VEUVE ROYALE was confusingly similar to VCP's mark THE WIDOW, in part because under the doctrine of foreign equivalents, an appreciable number of purchasers in the U.S. speak and/or understand French, and they "will translate" applicant's mark into English as "Royal Widow."
In appeal Court held that “Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks. When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied”.
The court affirmed the Board's decision that a likelihood of confusion exists between applicant's VEUVE ROYALE mark and opposer's marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT and affirmed the Board's refusal to register Palm Bay's VEUVE ROYALE mark.
The above case was regarding a situation wherein the trademark applied was not a generic word in the language in which it is applied and customer can translate the word in English and can get confused.
Words which are generic in one language
Apart from the above mention situation discussed in the above case, there may be a situation wherein a word which is generic in one language and applied for registration in a country wherein a different language is used by the people of country. The businesses today are not country centric but they are planned for the international expansion when opportunity arrived. Therefore to tackle the problems which may arise in future by the use of generic words as trademark in different language the courts have adopted a separate view in these cases.
In Otokoyama Co. v. Wine of Japan Import Inc2., in the original suit for injunction the U.S. District Court for the Southern District of New York rejected the contention of the defendant that the word Otokoyama is a generic term in Japanese language and hence not capable of being registered as a trademark. The trial court also refused to consider evidence that the Japanese trademark office had denied trademark protection for the plaintiff’s mark, based on the generic nature of the word otokoyama and provided injunction to Plaintiff against the use of trademark by the defendant. The defendant appealed to the Second Circuit, stating that the trial court’s decisions in both instances were in error Second Circuit vacated the preliminary injunction, declaring that the validity of the plaintiff’s trademark was cast into doubt by evidence that the underlying term was generic in Japan.
The circuit court held that “the same rule applies when the word designates the product in a language other than English. This extension rests on the assumption that there are (or someday will be) customers in the United States who speak that foreign language.”….. “[b]ecause of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States’ marketplace, commerce in the United States utilizes innumerable foreign languages. No merchant may obtain the exclusive right over a trademark designation if that exclusivity would prevent competitors from designating a product as what it is in the foreign language their customers know best.”…… “Courts and the U.S. PTO apply this policy, known as the doctrine of ‘foreign equivalents,’ to make generic foreign words ineligible for private ownership as trademarks……..
Second Circuit further held that “Whether a foreign decision is relevant in a trademark case in our courts depends on the purpose for which it is offered. The fact that a litigant has been awarded or denied rights over a mark in a foreign country ordinarily does not determine its entitlement to the mark in the United States. The foreign court decision is not admissible if that is the purpose of the offer. But if . . . the foreign decision is competent evidence of a relevant fact, it is relevant and admissible to prove that fact.” The defendant had offered the Japanese Patent Office’s decision to prove that the word otokoyama in Japanese refers to a type of sake. The circuit court held that it was error for the district court to have excluded the Japanese Patent Office’s decision, under these circumstances.
Therefore, a completely different approach is adopted by the courts in case where a trademark applied is generic in different language and applied for registration in a different country. In these cases courts are of the view that a word which is generic in nature and is the only way to describe a product even though in a different language then also the monopoly rights cannot be given to anybody. It will certainly hamper the business of others as they would not be able to describe their products with that word.
In India the doctrine is not used in many cases but the same is borrowed by the Indian Courts whenever a similar question is raised regarding the registration and infringement of trademarks.
In case of Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd . of Gujarat (India) (MANU/MH/0076/1997) the Hon’ble Bombay High Court had discussed the doctrine and its application in following terms.
The dispute in this case was regarding the use of the trademark VOLVO by the defendant. One of the contentions of the defendant in favour of adoption of the mark was that the word 'Volvo' is not an invented word of the plaintiffs and it being a Latin word meaning thereby,’re-rolling', 'to roll up', 'to roll together' and 'form by rolling' and since defendants' products were ultimately to be used for rolling the word 'Volvo' was selected by the defendants as part of their corporate name.
Court applied the doctrine of foreign equivalent and discussed the same as below:
Under the 'doctrine of foreign equivalents', foreign words are translated into English and then tested for descriptiveness or genericness. However, the 'doctrine of foreign equivalents' is not an absolute rule, for it does not mean that words from dead or obscure languages are to be literally translated into English for descriptive purposes. The test is whether, to those buyers familiar with the foreign language, the word would have a descriptive connotation. Foreign words from dead languages such as Classical Greek, or from obscure languages such those of the Hottentots or Patagonisans might be so unfamiliar to any segment of the buying-public that they should not be translated into English for descriptive purposes. However, words from modern languages such as Italian, French, Spanish, German, Hungarian, Polish etc. will be tested for descriptiveness by seeing whether the foreign word would be descriptive to that segment of the purchasing public which is familiar with that language."
Further it was held that "A rigid, unthinking application of the 'doctrine of foreign equivalents' can result in a finding quite out of phase with the reality of customer perception. The 'doctrine should be viewed merely as guideline and applied only when it is likely that the ordinary purchaser would stop and translate the word into its English equivalent. Thus, use of a term such as 'LA POSADA motor hotel' would not be generic or descriptive even though 'la posada' is roughly equivalent to the English word 'the inn'. If the foreign word is very similar to English equivalent such as OPTIQUE for eyeglass, AROMATIQUE for toilet water or SELECTA for beer, it would be descriptive under the rationale of the misspelling rule. Or, for some products, customers are familiar with an often used foreign term, such as 'Blanc' for white wine and champagne. Similarly, if the product is specifically directed to an ethnic customer group in the United States, such customers are may be likely to take the foreign word in its original meaning such that translation for trade mark purposes is appropriate. Thus, if canned ham is directed at a Polish speaking market, use of the phrase MARKA DOBRA SZYNKA meaning mark of a good ham would be treated as descriptive."
On the basis of the above discussion, the court rejected the contention of the defendant and provided relief to the plaintiff.
The doctrine is used in case of the words applied for trademark registration, which are from the language
known by the contemporary society not for the words which are from the ancient and extinct languages. It is not a general rule to use this doctrine in all cases and it is to be used when there is likelihood the customers may translate the word easily and get confused with the meaning of the word in English.
On the basis of above discussion and cases, we can conclude that the doctrine of foreign equivalents is to be used on the basis of facts and circumstances of each case. It should not be used as a general rule and should not be applied blindly in each and every case. The first and foremost criterion for applying the doctrine is to look into the knowledge of the consumer of the area where the mark is to be applied. If the people know the language and can translate the trademark then the question of likelihood of confusion is to be considered. In case the word in question is generic in one language and is only one expression by which the goods can be acknowledged then the protection may not be provided even if the language is not known to the people of the country. Further, with the liberalization and migration of people, there is likelihood that the population of the country certainly contains people from different countries knowing different language hence the possibility of confusion may arise.