The foreign equivalents doctrine is a rule in U.S. trademark law that requires courts and the Trademark Trial and Appeal Board (TTAB) to translate foreign words when evaluating their suitability for trademark registration or possible confusion with existing registered marks. This translation is crucial for assessing the registrability of a trademark. The principle seeks to protect consumers in the United States from confusion or deceptive information caused by the use of terms in different languages. In specific circumstances, a party might use a term as a mark that is either generic or merely illustrative of the goods in another language, or which holds the same meaning as an existing mark for speakers of that language. By mandating the translation of foreign terms into English, it guarantees that trademarks are not simply descriptive or generic words in another language, preserving their distinct identity. However, it is not an absolute and general rule and not to be applied strictly.
ANALYSIS
- Rule 28 of Trademarks Rules 2017
It provides for transliteration and translation i.e. it specifies
"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)".
According to the Rules, if a trademark includes words in a language other than Hindi or English, a suitable transliteration into roman script and an English translation of each word must be provided in the trademark application, and the applicant must also specify the foreign language of the words used. If the requested transliteration or translation is not provided, despite the Registrar's request in the examination report, the application will be considered abandoned. This is regarded as a compulsory guideline and has to be adhered to for the trademark registration process to continue.
- Transliteration
It refers to converting text from one script to another without translating the meaning of the words. This is typically done by replacing each character or word in the original script with its closest equivalent in another script. For example, if a trademark contains a word in Devanagari (such as Hindi or Sanskrit), the applicant will need to provide the equivalent Latin script (English) spelling for that word. When foreign or regional scripts are used, the authorities might not be familiar with the script or its pronunciation. Transliteration helps in overcoming this barrier. Transliteration is often required to understand how the trademark will be interpreted or pronounced in the marketplace.
- Translation
Translation refers to converting a word or phrase from one language into another language, retaining the meaning of the word. If a trademark is in Arabic, Chinese, Japanese, or any other non-English/Hindi language, the applicant must provide a translation into either Hindi or English. Words or phrases that are descriptive or generic in the local language cannot be registered as trademarks. Translation allows the authorities to assess whether the term used is merely descriptive of the goods or services for which the mark is sought. Translating foreign words ensures that consumers understand the nature of the product or service offered under the mark, thereby preventing any misleading or confusing trademarks from entering the market.
1.3 CONSEQUENCES OF THIS RULE:
- Distinctiveness and Descriptiveness: Trademarks are often required to be distinctive in order to be registered. The translation or transliteration process helps determine if a mark is descriptive and distinct. For example, a mark in Tamil might mean "delicious," and this could be considered descriptive if it's used for food products. Thus, for registration of trademark, a mark should be unique and distinct and should not be descriptive of the product.
- Precedents: In some cases, Indian courts and the Trademarks Office have rejected applications based on the meaning of the foreign terms. A foreign word could be deemed too descriptive, and thus ineligible for trademark protection.
- Likelihood of Confusion: Providing transliterations and translations helps the authorities assess if the mark might cause confusion with an existing mark in the market. For example, a foreign term in Arabic might have the same meaning as an already existing Hindi trademark.
- Contrary to public law and morality: By translating the words, this rule helps in determining whether the mark is contrary to public law and morality or not. If it contravenes with public law and morality, such mark is refused from the registration of trademark absolutely.
- DOCTRINE OF FOREIGN EQUIVALENTS:
The Doctrine of Foreign Equivalents, within trademark law, functions on a straightforward yet essential principle: in the evaluation of trademark applications, terms or phrases in foreign languages must be judged based on their English equivalents. This involves converting these foreign components into English, enabling trademark examiners to assess if they fulfil the registration requirements. It is crucial for upholding the uniqueness and efficacy of trademarks. Mandating the translation of foreign terms into English guarantees that trademarks are not simply descriptive or generic expressions in a different language, safeguarding their distinct identity. This principle is particularly significant in a globalized market, where trademarks play a vital role in differentiating one brand from another. It establishes a benchmark that protects against possible misuse or exploitation of language variations in trademarks, maintaining the integrity of the registration procedure. Thus, to interpret, the implementation of the Doctrine of Foreign Equivalents in India is regulated by "Rule 28 of the Trademark Rules, 2017". So, to summarise, in instances of trademarks that include words from foreign languages, there is a consistent trend within the Indian Trade Marks Registry to utilize 'The Doctrine of Foreign Equivalents' when assessing the distinctiveness of such trademarks.
- APPLICABILITY OF DOCTRINE IN US AND INDIA REGIME
The United States employs the Doctrine of Foreign Equivalents as a practical instrument in trademark legislation. According to this principle, foreign terms are converted into English, and their descriptive qualities or generic characteristics are evaluated. It's a fairly simple method that emphasizes preventing the foreign term from providing a business with an unjust competitive edge. If an English-speaking audience views a foreign term as descriptive or generic, it might be ineligible for registration. Under the U.S. approach, the application of this doctrine is more liberal in nature than in India.
In India, the Trademarks Act of 1999 does not specifically mention the foreign equivalents doctrine as it is utilized in the U.S. Nonetheless, Indian trademark legislation highlights the necessity for the transliteration and translation of words or characters that are not in English or Hindi, according to Rule 28 of the Trademarks Rules, 2017.
Under U.S. trademark law the doctrine of foreign equivalents requires the Courts and the United States Patent & Trademark Office ("USPTO") to translate foreign words from common modern languages into English, whereas In India, there is a universal tendency of the Indian Trademarks Registry to apply 'The Doctrine of Foreign Equivalents' while examining such a trademark for its distinctiveness.
- UNDERSTANDING THE DOCTRINE
The principle of foreign equivalents is a key concept in trademark law that necessitates translating foreign terms into English to assess if a trademark is descriptive or generic. The implementation of this doctrine, especially in the United States, aims to safeguard consumers by making sure that trademarks do not mislead or confuse due to the significance of foreign terms. Nonetheless, this principle is not definitive and absolute, and its implementation relies on several elements, such as the knowledge of the "purchasing public" regarding the foreign language and the situation in which the mark is applied.
- CORE PRINCIPLES OF THIS DOCTRINE:
According to the principle of foreign equivalents, if a trademark includes a foreign term, that term is converted into English and subsequently assessed for being descriptive or generic. This translation method enables trademark examiners and courts to determine if the foreign term expresses a meaning that directly characterizes the goods or services associated with the trademark.
- Descriptive Terms: If the translated term is determined to describe the goods or services, the mark could be denied registration. For example, if a foreign term translates to "fresh" regarding a food item, the trademark might be declined on the basis that it simply describes the product's features.
- Generic Terms: Likewise, if a foreign term converts to a generic expression, it might be refused registration due to its lack of distinctiveness.
- NOT AN ABSOLUTE RULE:
The applicability of this doctrine is not applied as an absolute rule or a universal rule. Rather, its application is flexible and depends on various factors depending upon how the purchasing public would perceive the term. Below are the two key reasons why the doctrine is not an absolute rule in India:
- Familiarity of the Purchasing Public:
Even if the purchasing public is familiar with the foreign language, the doctrine is only applied when the foreign word(s) would appear descriptive or non-distinctive to the consumer i.e. to that purchasing public of that area. This means that the foreign term should convey something about the product or service, like quality, origin, or function, to be considered descriptive. If the product or service is aimed at a specific ethnic community (such as a French-speaking audience or an Italian expatriate market), the trademark might be evaluated based on the community's understanding of the foreign term. In such cases, the term could still be treated as descriptive for that specific market segment, even though it might not be descriptive to the general public
- Dead or obscure languages:
For foreign words in languages that are either dead (like Latin) or obscure, the application of the doctrine is more flexible. Since these languages are not likely to be understood by most consumers, the foreign word may not be translated for descriptive purposes unless evidence suggests it holds cultural or industry-specific significance. For example, if a brand uses a term from ancient Greek or an obscure language such as Sanskrit, which may not be widely understood by the average consumer, it would not automatically be considered descriptive just because of its translation.
RELEVANT CASE LAWS
- Laboratories De Biologie Vegetable Yves Rocher Vs the Registrar of Trademarks, 2022
The appellant applied for the trademark "COMME UNE EVIDENCE" for goods in Class 3, but the Senior Examiner refused the application, citing lack of distinctiveness under the doctrine of foreign equivalents. The examiner contended that the French phrase, which translates to "as evidence" in English, described the products and was not distinctive. The examiner determined that the public's knowledge of French rendered the term generic and lacking in distinctiveness. The Hon'ble Court of Delhi granted the appeal, emphasizing that the principle of foreign equivalents is not definitive and should be applied solely when the buying public understands the foreign language and the term is descriptive. Due to the limited use of French in India, the Court decided that the mark would not be regarded as descriptive or non-distinctive. The Court additionally determined that the mark is an arbitrary assembly of words, not explicitly descriptive of the products, and noted that it had been registered in various countries, including France, as distinctive. The appeal was permitted to continue, with protection provided solely for the complete combination of words.1
- Aktiebolaget Volvo Of Sweden vs Volvo Steels Ltd. Of Gujarat ,1997
In this case, the dispute centred around the trademark "VOLVO." The defendant argued that the word "Volvo" derived from the Latin word "volvĕre," which means "to roll," and hence could be deemed descriptive for their rolling products, such as steel. However, the Court rejected this argument and chose not to apply the Doctrine of Foreign Equivalents in this case.
The Bombay High Court in this case clarified that the Doctrine of Foreign Equivalents should not be automatically applied to all foreign words but should instead depend on whether the average consumer is familiar with the foreign language. Latin, being a dead language that is not commonly understood by the general public, was deemed obscure and not likely to be recognized by the purchasing public. In this case, the Court emphasized that the public in India would not necessarily connect the Latin word "Volvo" with the meaning of "to roll," as it is not a widely spoken or understood language.
As a result, the Court concluded that "VOLVO" could not be considered a descriptive term for the goods in question, as it had no direct connection or meaning that would make it descriptive to the ordinary consumer. The ruling reinforced the idea that the Doctrine of Foreign Equivalents does not mandate the translation of every foreign word into English; instead, it depends on the familiarity of the public with the language in question. Therefore, "VOLVO" was not rejected as a trademark on the grounds of descriptiveness and was allowed to maintain its distinctiveness.2
- Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar Refineries Pvt. Ltd., 2014
The plaintiff's trademark faced opposition because "RISO" means "rice" in Italian. The opposition argued that the mark was descriptive, implying it referred to rice-based products. However, the Bombay High Court ruled that the average Indian consumer, unfamiliar with Italian, would not immediately associate "RISO" with rice. This case highlights the importance of understanding the familiarity of the purchasing public with foreign languages when assessing descriptiveness. While foreign terms from widely recognized languages like English or French might be deemed descriptive, terms from less familiar languages, like Italian in this case, may not be. The Court considered how likely the average Indian buyer would be to translate "RISO," reinforcing that descriptiveness is determined by consumer perception.3
CONCLUSION
To conclude, the use of the Doctrine of Foreign Equivalents in trademark law, especially in India, is not a fixed principle but rather one that relies on context. The principle, which interprets foreign terms in English to evaluate their descriptiveness or generality, is utilized according to the ease of understanding the foreign language by the buying audience. Indian courts have highlighted that this principle should only be relevant when the applicable consumers are expected to comprehend and interpret the foreign term. In instances where the foreign language is broadly recognized, like French or Italian, the term might be evaluated for descriptiveness according to the public's awareness of its significance. Nevertheless, when addressing lesser-known or rare languages, like Latin or local dialects, the term might remain untranslated for clarity if it is unknown to the average user. This method guarantees that trademarks are assessed in a way that mirrors consumers' real-world perceptions, enabling more adaptable and context-aware judgments.
In general, Indian courts have emphasized that the Doctrine of Foreign Equivalents should not be applied inflexibly. Instead, it should consider consumer understanding, market segmentation, and the unique traits of the foreign concept. This guarantees that trademarks possessing true distinctiveness are not unfairly denied and that arbitrary or non-descriptive marks are safeguarded against generic usage stemming from public perception and recognition.
BY
Vijay Pal Dalmia, Advocate
Supreme Court of India & Delhi High Court
Email id: vpdalmia@vaishlaw.com
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Aditya Dhar, Advocate
Email: aditya.dhar@vaishlaw.com
Mobile: +91 9971873110
And
Aashi Aggarwal
Symbiosis Law School, Noida
aashiaggarwal0708@gmail.com
Footnotes
1. Laboratories De Biologie Vegetable Yves Rocher Vs the Registrar of Trademarks, MANU/DEOR/200093/2022
2. Aktiebolaget Volvo Of Sweden vs Volvo Steels Ltd. Of Gujarat, PTC (18) 47, (1997)
3. Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar Refineries Pvt. Ltd, 2014 SCC Online BOM 595
Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India
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