Trademark law plays a critical role in protecting product identities while protecting consumer interests. But how does trademark law ensure consumer protection against confusingly similar marks in a country with more than 19,500 languages?
This blog is based on the facts of linguistic diversification in India and fast-growing international marketplaces; hence, it becomes very important to understand the Doctrine of Foreign Equivalents in trademark law. Therefore, this blog aims to explain and highlight how this doctrine is relevantly and necessarily applied in the Indian context.
To make the discussion richer, the Indian approach is compared with practices in the legal framework of the European Union. It makes a comparison of similarities and differences as well, thereby giving an overview.
WHAT IS THE DOCTRINE OF FOREIGN EQUIVALENTS?
The Doctrine of Foreign Equivalents operates under the assumption that consumers in a marketplace are likely to translate a non-English term into English or their local language. Based on this very assumption, the doctrine necessitates the translation of words of a foreign language present in trademarks to English or a local language, in order to check for phonetic or conceptual similarities with already existing marks to ensure it doesn't lead to confusion amongst the purchasing population.
APPLICATION OF THE DOCTRINE OF FOREIGN EQUIVALENTS IN INDIA
The Doctrine of Foreign Equivalents though not in its strict sense is enshrined in Rule 28 of the Trademark Rules, 2017 which states that "Where a trademark contains one or more words or numbers in scripts other than Hindi or English, the applicant shall provide in the application, a precise transliteration and translation of each such word and number in English or in Hindi and state the language to which the word(s) or number(s) belong".
The Trademark Act 1999, also provides for dealing with the likelihood of confusion and restricts registration of trademarks that lack distinct nature. For example, Section 9(1) of the Trademarks Act, 19991, denies trademark registration that lack a distinct character or are merely descriptive in nature. Likewise, Section 112 prescribes refusal of a trademark if it is identical or similar to another existing trademark. Famous trademarks are given extra protection; a new trademark is refused registration even if it is intended to be used for unrelated goods.
India is a multilingual country, with over 22 languages officially recognized and around 19,500 other languages spoken across the nation3. This diversity coupled with the stark contrast of global exposure of the people belonging from the rural and urban environment creates a special problem under the Doctrine of Foreign Equivalents. The manifestation of this doctrine requires Indian trademark law to consider not only prominent languages like Hindi, Bengali, Tamil, and Marathi but also regional dialects and minor languages.
Moreso than that the doctrine is also to consider the level of global exposure and whether the average consumer is aware of a language or not, this was established in the case of Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat4 where the defendant contended that the mark "VOLVO" was descriptive as the word meant "to roll", or "roll into" in Latin and plaintiff's products were used for rolling. However, the court ruled that the doctrine "does not intend to translate every language in English; rather the test is whether the buyers are aware enough to translate the foreign language." Latin being an obscure and forgotten language, it is unlikely to be confusing; therefore, it was held that the mark "VOLVO" was not descriptive5.
Similarly, in Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar Refineries Pvt. Ltd.,6 the case was concerning a dispute of plaintiff's mark "RISO LITE". According to defendant, the mark was descriptive as rice in Italian is called "RISO". But the court rejected the application of doctrine in India stating it would be unlikely that the buyers knew Italian and that they would translate plaintiff's mark in English. Therefore, the mark "RISO LITE" was held not to be descriptive7.
In another case of Laboratories De Biologie Vegetale Yves Rocher Versus the Registrar of Trade Marks C.A., an appeal was filed against the refusal of trademark application for "COMME UNE EVIDENCE" due to lack of distinctiveness. The Court clarified the doctrine is not an absolute rule and applies only if the purchasing public is familiar with the foreign language. Since French is not widely spoken in India, the mark could not be deemed devoid of distinctiveness.8 The judiciary's refusal to apply the doctrine rigidly reflects a balanced approach. However, this flexibility could lead to inconsistency, especially as foreign trademarks become more common.
The further integration of India into the global economy, the judiciary may face complicated challenges balancing international trademark norms with domestic realities.
While the doctrine is not rigidly established within the legal system, its flexible application has resulted in inconsistent judicial interpretations on a case-to-case basis, leading to ambiguity and a weak legal position. Although judicial precedents have clarified the application of the doctrine to trademarks in foreign languages, there remains significant uncertainty regarding its applicability to India's diverse regional languages. It is unclear whether a language that is widely spoken in one part of the country but unfamiliar in another would fall within the scope of Rule 28 of the Trademark Rules, 2017, which broadly applies to all languages other than Hindi or English.
INDIA VS. EUROPEAN UNION: A COMPARATIVE APPROACH
A relevant comparison can be drawn with the European Union, whose socio-linguistic diversity mirrors that of India.
To administrate the Community trade mark, the Office for Harmonization in the Internal Market (OHIM), now known as European Union Intellectual Property Office (EUIPO), was created. It reviews trademark applications for compliance and publishes those eligible for registration. Under EU law, trademarks can be refused registration on absolute or relative grounds. Absolute grounds for refusal reflect the EU's linguistic and multicultural diversity.
In the EU, language rules are key to managing Community trademarks. OHIM (now EUIPO) works in five main languages: English, French, German, Italian, and Spanish. Trademark applications can be filed in any EU language, but applicants must choose a second language from OHIM's five main ones. If the application is in a different language, it's translated into the chosen second language.
When deciding if a trademark can be registered, courts consider the distinct and descriptive nature as separate issues. Marks are reviewed for descriptiveness in nearly all EU languages without translation. Examiners may also consider how non-native speakers understand the mark.
In Ford Motor Co. v. OHIM,9 an appeal against OHIM's refusal to register "OPTIONS" as a community trademark for services like insurance, financing, and leasing. The refusal was based on a lack of distinctiveness in English and French. Ford argued that the mark had been used in several EU countries and claimed acquired distinctiveness across the Union. However, the court upheld OHIM's decision, emphasizing that distinctiveness must be proven in regions where the refusal is based on descriptiveness or lack of distinctiveness.
The case highlights the interpretation of trademarks in multiple languages and the requirement for acquired distinctiveness in the relevant linguistic regions. It also underscores that consumer perception in native language regions is crucial, with no consideration given to overlapping language usage in other parts of the EU.
In Taurus-Film GmbH & Co. v. OHIM10, the trademark "CINE ACTION" was denied registration for various entertainment-related goods and services due to its lack of distinctiveness and descriptiveness. The court upheld the Board of Appeals' decision, noting that "CINE" is understood as film or cinema in multiple languages, and the phrase "CINE ACTION" would be interpreted as "action film," making it descriptive for goods related to such films. However, the refusal was overturned for goods unrelated to action films, as the mark's descriptiveness in that context did not eliminate its distinctiveness for other goods.
In S.L. Benelux-Merkenbureau v. Hagelkruis Beheer BV (2004), the court held that likelihood of confusion between foreign language marks should be evaluated both in terms of phonetic similarities and conceptual meaning derivable from translation of terms into local languages of the European Union.
In this manner, the EU has created a flexible and harmonized approach to trademark assessment that can be instructive for India, where regional diversity in language mirrors the complexity of the European market.
The Doctrine of Foreign Equivalents presents opportunity and challenge in the Indian context also. With immense linguistic diversity and uneven global exposure among urban versus rural populations, India is indeed at a very interesting crossroads. The pragmatic approach currently exercised by the judiciary has till date managed to keep on balancing doctrine's principles with realities on ground by taking in the direction of consumer familiarity. Although India still has a long way to go to prepare for cases of trademark disputes concerning increasing complex use of foreign languages.
Drawing lessons from the harmonized yet flexible system of trademarks developed by the EU, India could assimilate its approach with the nuance of sociocultural developments. In a framework that is more inclusive and dynamic-considering regional dialects, growing consumer awareness, and the onslaught of globalization-India might well turn out to be the leader that adapts trademark jurisprudence. As trademarks continue to transcend borders, the Doctrine of Foreign Equivalents will surely play a great role in forming India's trademark policies for years to come.
Footnotes
1."India Code: Section Details, https://www.indiacode.nic.in/."
2. "India Code: Section Details, https://www.indiacode.nic.in/."
3." India - most common languages 2011, Statista, https://www.statista.com/statistics/616508/most-common-languages-india/ (last visited Oct 16, 2024)."
4." Volvo AB v. Volvo Steels Ltd. of Gujarat (India), 1997 SCC OnLine Bom 578"
5." Diva Rai, Doctrine of Foreign Equivalents and Prosecution History Estoppels, iPleaders (May 27, 2020), https://blog.ipleaders.in/the-doctrine-of-foreign-equivalents-and-the-doctrine-of-prosecution-history-estoppels-a-pragmatic-perspective-in-trademark-law/ (last visited Dec 16, 2024)."
6." Kamani Oil Industries Pvt. Ltd. v. Bhuwaneshwar Refineries Pvt. Ltd., 2019 SCC OnLine Bom 3539"
7." Rai, supra note 5."
8.
9. CURIA - Documents, https://curia.europa.eu/juris/document/document.
10. Taurus-Film GmbH & Co v Office for Harmonisation in the Internal Market, (2001), https://eur-lex.europa.eu.
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