Summary
This post analyses the doctrine of foreign equivalents, a principle in trademark law that equates foreign words with their English translations for assessing confusion or descriptiveness. It outlines the USPTO's criteria for applying this doctrine and highlights its limitations, especially concerning obscure languages or cases where consumers are unlikely to translate the mark. The post references key judicial decisions from the US and Europe to illustrate the doctrine’s real-world application. It concludes by noting that the doctrine’s scope depends on direct translation and consumer perception, with a preview of further discussion on its application in India.
First published 10 October 2014.
The Doctrine of Foreign Equivalents is a rule in trademark law providing that a foreign word and its equivalent English translation may be considered confusingly similar. Under this doctrine, marks that consist of or include words from common, modern foreign languages are translated into English to assess whether the mark is generic or descriptive, and to evaluate the likelihood of confusion it may cause.
The USPTO Tests
The Trademark Manual of Examining Procedure of the USPTO sets out the following tests for determining the applicability of the doctrine of foreign equivalents:
- Whether, to a United States purchaser familiar with the relevant foreign language, the mark would indicate its English equivalent.
- Whether, to a United States purchaser familiar with the relevant foreign language, the mark would carry a descriptive or generic meaning in that language.
- Whether the use of the foreign word would be descriptive of the product to the segment of the purchasing public familiar with that language.
Limitations of the Doctrine
The doctrine does not apply to words from dead or obscure languages that are unlikely to be known to the purchasing public. Its application is also limited in circumstances where it is unlikely that a purchaser would translate the foreign mark, and where the purchasing public would simply accept the mark as it stands. The United States Court, in The Palm Bay Imports case, observed that this doctrine is not an absolute rule but should be treated as a guideline only.
The applicability of the doctrine is therefore confined to circumstances in which evidence shows that the English translation is direct and literal, and where there is no contradictory evidence of other relevant meanings or shades of meaning.
ECJ Treatment of Foreign Marks
In considering the likelihood of confusion arising from the adoption of a foreign mark, the European Court of Justice, in 2006, held that the mark MATRATEZEN — which means mattresses in German — could not be considered descriptive in Spain, where it had no meaning to the average Spanish consumer who was unaware of its German meaning. The Court allowed the mark to be registered and used, provided the use was honest and genuine.
The application of this doctrine in the Indian context is examined in the next post in this series.
Disclaimer: This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.