Understanding the Doctrine of Foreign Equivalents – Part 1
This post was first published on 10th October, 2014.
The Doctrine of Foreign Equivalents is a rule used in the Trademark Law which states that a foreign word and its equivalent English translation may be deemed confusingly similar. Under this doctrine, marks consisting of or including foreign words or terms from common, modern languages are translated into English to determine the extent to which it is generic, descriptive, the likelihood of confusion it may cause among other similar issues.
The Trademark Manual of Examining Procedure of the USPTO provides the following tests for determining the applicability of the doctrine of foreign equivalents:
- Whether, to the US buyer familiar to said foreign language, the mark would indicate its English equivalent?
- Whether, to the US buyer familiar to the said foreign language, the mark would have a descriptive or generic connotation as in the foreign language? and
- Whether the use of the foreign word would be descriptive of the product to that segment of public which is familiar with that language?
However, the doctrine is not applicable to foreign words from dead or obscure languages which may be unfamiliar to the purchasing public. The applicability of this doctrine is limited in cases where it is unlikely that a buyer will translate the foreign mark and will take it as it is. The US Court, in The Palm Bay Imports case, observed that this doctrine was not an absolute rule but should be viewed merely as a guideline.
Therefore, the applicability of the doctrine is limited to circumstances in which evidence shows that the English translation is literal and direct and is with no contradictory evidence of other relevant meanings or shades of meanings.
While discussing the concept of likelihood of confusion in case of adopting a foreign mark, the ECJ, in 2006, held that the mark MATRATEZEN which meant mattresses in Germany, cannot be considered descriptive in Spain, where it did not mean anything because the consumer was not aware of its meaning. The Court, in said case, allowed the mark to be registered and used as long as the use was honest and genuine.
In our next post we will be looking at the applicability of this doctrine in the Indian context.