A question that is becoming increasingly common is whether it is possible to trademark a hanzi or other non-english name or logo. In Australia’s richly multicultural society, it’s common to find a deli specialising in Greek sweet treats, an Israeli hole-in-the-wall sabich canteen or a Canto-Australian fusion restaurant just up the road. If a majority of customers speak Mandarin, it’s important for a business to have the freedom to trademark a hanzi name. Case law provides guidance on trademarking non-English names. A summary of the most recent relevant case is set out below, followed by a discussion of what this means for trademarking a hanzi business name.  

What Do the Courts Say?

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HC 48

Cantarella owned two registered trademarks, Oro and Cinque Stella, for its brands of coffee. Oro means “gold” in Italian and Cinque Stella means “five stars”. Cantarella alleged Modena was infringing its trademarks.

The case focused on what constitutes a trademark and when to reject a trademark application. 

Under section 17 of the Trade marks Act 1995, a trade mark is a sign used to ‘distinguish’ goods or services in the course of trade. If a trademark does not distinguish goods and services, an application to trademark should be rejected. A trademark does not distinguish goods and services where the mark is not ‘inherently adapted’ to distinguish the goods and services of one person from those of others, i.e. is ‘too descriptive’ of the goods or services provided.

Modena argued that the question of whether a mark is ‘inherently adapted’ to distinguish should be answered in relation to whether other traders in the industry would have a legitimate desire to use the mark.

Cantarella argued that the test of whether the marks were inherently adapted to distinguish was whether the marks were directly descriptive of the relevant goods or services. The High Court agreed with Cantarella.

Trademarking a Hanzi Name

What might this mean if a business wants to trademark a hanzi business name? The Cantarella judgment seems to indicate that it is possible to trademark a non-English word, as long as it is ‘inherently adapted’ to distinguish the relevant goods or services (i.e. it is not too descriptive).

If a business wanted to trademark the hanzi name for gold (金) for its brand of coffee, Cantarella seems to indicate that this would be possible. The term ‘gold’ is not descriptive of coffee. Therefore, it’s possible for the hanzi terms to be trademarked. Although, it might be a problem if the business sold gold as its product and tried to trademark the hanzi symbol for gold!

Areas of Uncertainty

Cantarella does leave certain questions unanswered. For example, what if the hanzi character in its English translation is exactly the same as another trademark in English for similar goods? Would this pose a barrier to trademark registration?

Conclusion

In summary, Cantarella indicates that it is possible to trademark foreign language names. Areas of uncertainty remain, but Australia’s trademarking laws work well with our multicultural society to allow people to trademark their own language names and symbols.

If you have any questions or need any assistance applying to trademark your business name, please get in touch! One of LegalVision’s experienced Trade mark lawyers would be delighted to help.

Chloe Sevil

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