If your business has connections to another language, you may wonder if you can register a trade mark containing foreign words or characters in Australia. If you wish to do so, you should consider:

  • your target market;
  • how you intend to use the trade mark; and
  • which words you wish to use.

Generic or descriptive terms are difficult to register as trade marks. Using a foreign word or character does not make it easier to register these terms, because IP Australia assesses foreign words and characters according to their English meaning during the registration process.

Can I Trade Mark Words in Languages Other Than English?

You may be able to trade mark words in a foreign language. However, you are unlikely to be able to register foreign words that describe the nature of your goods and services. This is because many traders in your industry may need to use them.

For example, la deliziosa, which is Italian for the delicious one, was refused registration as a trade mark in Australia in 1991. This was because consumers were likely to be able to understand the term and what it suggested about the products. 

However, kiku, which is Japanese for chrysanthemum, was successfully registered as a trade mark in Ireland in 1978 for cosmetic products. This was both because the word is unrelated to cosmetic products and because the average person in Ireland at the time was considered unlikely to know what kiku meant.

If you would like to register a trade mark containing words in a foreign language, you need to consider whether:

  • the term is descriptive of the nature or quality of the products you intend to sell; and
  • an ordinary Australian citizen would be familiar with the term.

You should also check whether seemingly generic words in foreign languages have well-known meanings elsewhere in the world. This is because words commonly in use elsewhere may not be registerable 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 word to refer to a popular game called ‘the devil on two sticks’.

Can I Trade Mark Non-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 the alphabetical letters the English language is written in. 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 word given its meaning.

This ensures that other traders in your industry are not restricted from describing their products or services.

When registering 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’).

You may also need to protect your English trade mark overseas. If you trade in China, for example, 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 trade marked this name. 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.

Whenever possible, you should also register the transliteration and translation of your trade mark in non-English speaking countries to gain maximum protection.

Can My Trade Mark Be a Combination of Multiple Languages?

You may be able to register a trade mark that consists of more than one language. However, you will be unable to register the trade mark if the words or characters:

  • all share the same meaning; or
  • merely describe the products.

For example, IP Australia would consider a trade mark consisting of the same descriptive word in three different languages ( i.e. big grande gros) to be descriptive and confusing to consumers. It is likely that they would refuse to register it as a trade mark.

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.

Providing these does not mean that the English translation and Roman transliteration of your trade mark will be protected. To protect all three versions, you will need to register three separate trade marks. 

If you need help registering a trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

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