If your business name or logo contains foreign words or characters, you may wonder if you can register this as a trade mark in Australia. If you wish to do so, you should consider:
- your target market;
- how you intend to use the trade mark; and
- whether the trade mark is descriptive of your goods and services.
This article will discuss the requirements for registering non-English trade marks, covering descriptive trade marks, the familiarity of foreign words to Australians, transliteration/translation of foreign words, and trade marks in multiple languages.
Generic or Descriptive Terms
To qualify for trade mark registration, IP Australia provides that a trade mark cannot simply be generic or descriptive of the goods and services the business offers. Using a foreign word or character does not make registering these terms easier. This is because IP Australia assesses foreign words and characters according to their English meaning during the registration process.
This is because other traders in your industry may need to use them. Accordingly, granting you a monopoly over those words would be unfair. For example, ‘la deliziosa’, Italian for ‘the delicious one’, was refused registration as a trade mark in Australia in 1991. The basis for refusal was that consumers would likely be able to understand the term and what it suggested about the products.
Familiarity to the General Public
The second element is whether an ordinary Australian citizen would be familiar with the foreign word or character. If the trade mark is easily recognisable and relates to the goods and services of the business, it is unlikely that IP Australia will allow it to be registered.
You should also check whether seemingly generic words in foreign languages have well-known meanings elsewhere. This is because words commonly used elsewhere may not be registered as a trade mark in Australia.
For example, the Italian word ‘diabolo’ was refused registration as a trade mark in 1908. At the time, English consumers used the term to refer to a popular game called ‘the devil on two sticks’.
Continue reading this article below the formNon-Roman Characters or Letters
Trade marks made up of non-Roman characters or letters must comply with the same rules as trade marks in Roman characters. Roman characters are letters in the English alphabet. IP Australia may reject your trade mark application if:
- the average consumer of your product would know or have a sense of the word’s meaning; and
- other traders are likely to need to use the term given its meaning.
This ensures that other traders in your industry are not unfairly restricted from describing their products or services. When applying to register trade marks that consist of non-Roman characters or letters, you will need to provide:
- a transliteration of the characters into Roman letters (i.e. the phonetic reading of the characters); and
- an English translation of the words.
For example, the Japanese characters こんにちは are transliterated into Roman letters as konnichiwa and translated into English as hello. In this example, you would need to provide IP Australia with both the transliteration (‘konnichiwa’) and the translation (‘hello’).
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Your Trade Mark Overseas
You may also need to protect your English trade mark overseas. For example, suppose you trade in China. The Chinese version of your brand is just as important as the English version. For example, the Australian wine brand Penfolds has traded in China since the early 1990s using the Chinese name Ben Fu. However, Penfolds never registered their trade mark rights to this name in China. When the brand attempted to do so in 2011, they discovered that a Chinese individual had already registered Ben Fu as a trade mark. It took Penfolds years of expensive legal proceedings to cancel this trade mark and secure the right to use the name.
Learning from this example, you should also consider applying to register the transliteration and translation of your trade mark in non-English speaking countries to gain maximum protection.
Combination of Multiple Languages
It is possible to register a trade mark that consists of more than one language unless the words or characters:
- all share the same meaning; or
- merely describe the goods/services of the business.
For example, IP Australia would consider a trade mark consisting of the same descriptive word in three different languages (i.e. big, grande and gros) to be descriptive and confusing to consumers. Accordingly, the application would likely be refused.
Key Takeaways
If you intend to register a trade mark that contains words in foreign languages or characters, you should consider whether the foreign words you wish to use are:
- descriptive; and
- easily understood by the general public.
When you apply for a trade mark, you may need to provide:
- a transliteration of any foreign characters; and
- an English translation.
Importantly, providing these does not mean that your trade mark’s English translation and Roman transliteration will be protected. To protect all three versions, you will need to apply to register three separate trade marks.
If you are looking to protect your trade mark, LegalVision’s experienced intellectual property lawyers would be happy to assist through our membership. Call us today on 1300 544 755 or visit our membership page for more information.
Frequently Asked Questions
It is possible to register a unique foreign word as a trade mark. However, the word needs to meet the standard requirements, such as that the trade mark is not descriptive of the goods/services offered and does not conflict with an existing trade mark.
Registering your trade mark will grant you exclusive rights to use your trade mark within your classes of goods and services. This means that you will be able to enforce your trade mark against infringers, which is one way to protect your brand.
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