India: Doctrine Of Foreign Equivalents: A Pragmatic Approach

Last Updated: 26 September 2013
Article by Himanshu Sharma

"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.

Indian perspective

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.

Conclusion

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions