As a business owner, consider registering your trade mark. A trade mark is an excellent way to distinguish your brand from your competitors. Additionally, trade mark registration gives your trade mark an additional layer of protection, making it a worthy investment. However, suppose your trade mark utilises other languages or you intend to build a brand around a foreign language. In that case, you should make some additional considerations.
This article will take you through three tips for trademarks in languages other than English.
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Consider Your Target Market
When establishing if you should have a trade mark in another language, first consider your target market.
If you only intend to use your trade mark in Australia, it might be easier to register a trade mark with foreign words. However, this might create difficulties if you later wish to expand to an international market. For instance, if it is a widely understood or spoken language.
Alternatively, you may want to register a trade mark using non-Roman characters. It is reasonable to assume that most Australians will not understand non-Roman characters in Australia. As such, you may wish to reconsider if your trade mark will reach your intended audience if a majority of the population cannot understand it.
Assess the Rules
The standard trade mark rules apply when registering a trade mark in a foreign language. This includes that your trade mark cannot be:
- descriptive of their goods or services; or
- generic terms.
When applying for a trade mark not written in Roman letters, you may be required to provide a transliteration of the characters and an English translation of the words. IP Australia will then assess these words according to their English meaning and ensure that they meet the requirements for registration.
Continue reading this article below the formConsider the Understanding of the Word
When applying for a trade mark in a foreign language, you will also need to consider how distinguishable the term is. For example, a 2014 High Court case considered whether the Italian words ‘Oro’ and ‘Cinque Stelle’ (meaning ‘gold’ and ‘five stars’ respectively’) were inherently adapted to distinguish and, therefore, capable of registration as trade marks in Australia.
The dispute arose when coffee import company Cantarella commenced proceedings another coffee import company, Modena. Cantarella were the owner of two registered Australian trade marks for ‘Oro’ and ‘Cinque Stelle’ and was displeased when Modena imported Molinari coffee products with the exact words on their packaging into Australia.
Modena argued that the phrases are commonplace words that other traders would ordinarily need to use these words to describe their coffee products, which was found to be the case, particularly in the marketing of Italian-style coffee products.
The High Court found that the following process is best when making a finding on such matters:
- Determine the word’s ordinary meaning to persons in Australia who will purchase, consume, or trade in the goods or services. This question should determine whether the trade mark is directly descriptive of the goods or services and if so if relevant persons will understand it; and
- Once the word’s ordinary meaning is determined, consider the likelihood that other traders may wish to use it in connection with their goods or services because of its ordinary meaning.
The High Court did not consider that either ‘Oro’ or ‘Cinque Stelle’ are related directly to coffee goods or have words attesting directly to the character or quality of the goods.
Key Takeaways
If you are considering registering a trade mark in a foreign language, you should keep in mind that your trade mark will be subject to the same requirements as English language trademarks. This includes that the translation of your trade mark cannot be:
- descriptive of the goods and services provided; or
- generic.
If you need assistance registering a trade mark for your business, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
You can register a trade mark for words in a foreign language. However, your trade mark will still be subject to the same requirements as English trademarks. This means that the translation of your trade mark cannot be descriptive of the goods and services provided or generic.
You can register a trade mark for non-roman letters or characters. When applying to register a trade mark with non-Roman characters or letters, you may be asked to provide a transliteration of the characters and an English translation of the words. In addition, your trade mark cannot be descriptive, the goods and services provided, or generic.
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