Lost in Translation? Trade Marking Foreign Words

Sharon Givoni Consulting Intellectual Property

Lost in Translation? Trade Marking Foreign Words

Australia is a vibrant and multicultural country. We recently received an inquiry from a client about whether they can seek trade mark protection of a word in a foreign language.

Generally, to enjoy trade mark protection, your trade mark must be capable of distinguishing your goods and/or services from others in the marketplace and to some level of extent, the trade mark must be inherently adaptive. It is important to note that descriptive terms are generally not likely to establish inherent adaptability. Thus it is important to choose your words carefully trade marking foreign words.

You may consider using foreign words as a trade mark to describe your business’ goods or services, which, on its face, may be an easier option to achieve an inherently adapted trade mark. However, this is somewhat of a grey area and may not be as straightforward as one would assume, it all depends on the facts surrounding the circumstances.

This issue was considered on appeal by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty [2014] HCA 48. The legal issue was whether Cantarella’s trade marks ‘ORO’ and ‘CINQUE STELLE’ (meaning ‘gold’ and ‘five stars’ in Italian, respectively) were inherently adaptive to distinguish Cantarella’s products within the meaning of s 41(3) of the Act. The majority held that the trade marks were inherently adapted to distinguish Cantarella’s goods.

It must, therefore, be determined whether the non-English language trade mark conveys a meaning to those who will be concerned with (being those involved in the purchase, consumption and trade of) the relevant goods or services. For example, in Maxam Food Products Pty Ltd, Re [1991] ATMO 12, the words “La Deliziosa”, Italian for “the delicious one”, were refused on the basis that their meaning would be transparent to the general public, and recognised as a laudatory expression in relation to foodstuff goods by large numbers of ordinary Australians.  

If however, the non-English word does not convey a meaning to those who will be concerned with the relevant goods or services, then the trade mark is likely to be inherently adapted to distinguish. In the United Kingdom case Burgoyne’s Trade Mark (1889) 6 RPC 227, the word ‘OOMOO‘ was held to designate “choice” in an Australian Aboriginal language. However, the trade mark was found to have signified nothing to the ordinary English person.  

So, foreign or not, the same principals apply when seeking trade mark protection of a non-English word (or a collection of words). If Australians understand the meaning of the foreign word and it is descriptive in nature, you are unlikely to achieve trade mark protection.

For more information visit IP Australia’s site or contact us at Sharon Givoni Consulting.

Written by: Victoria Tsiolis