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Doctrine of Foreign Equivalents – Part 2

BananaIP Counsels > Intellectual Property  > Doctrine of Foreign Equivalents – Part 2

Doctrine of Foreign Equivalents – Part 2

The image reads Trademarks. The post is about interesting development in trademark law. Click on the image to read the full post.

This post was first published on 14th October, 2014.

 

As discussed in our earlier post, the Doctrine of Foreign Equivalents under the Trademarks Law requires the Trademark Office to translate foreign words to English in order to determine whether certain marks qualify for trademark registration or not. In this post, we are looking into whether the Indian Courts consider this doctrine an acceptable principle of the Trademark Law.

Indian Courts have not faced the question of applicability of this doctrine in many cases yet. The Bombay High court had discussed the applicability of the doctrine in the 1997 case of Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat. This case relates to the use of the mark VOLVO by the Defendant. One of the contentions taken by the Defendant as a reason for adoption of the mark VOLVO was that the mark was not a mark invented by the Plaintiff and hence was not distinctive. The Defendant argued that the mark was adopted from the Latin word meaning ‘Re-Rolling’ and since their products were used for rolling, the mark VOLVO was adopted for its products.

The Bombay High court discussed the Doctrine of Foreign Equivalents in the following words:

“Applying the Doctrine Under the ‘doctrine of foreign equivalents’, foreign words are translated into English and then tested for descriptiveness or genericness. However, the ‘doctrine of foreign equivalents’ is not an absolute rule, for it does not mean that words from dead or obscure languages are to be literally translated into English for descriptive purposes. The test is whether, to those American buyers familiar with the foreign language, the word would have a descriptive connotation. Foreign words from dead languages such as Classical Greek, or from obscure languages such those of the Hottentots or Patagonisans might be so unfamiliar to any segment of the American buying-public that they should not be translated into English for descriptive purposes. However, words from modern languages such as Italian, French, Spanish, German, Hungarian, Polish etc. will be tested for descriptiveness by seeing whether the foreign word would be descriptive to that segment of the purchasing public which is familiar with that language.”

“A rigid, unthinking application of the ‘doctrine of foreign equivalents’ can result in a finding quite out of phase with the reality of customer perception. The ‘doctrine should be viewed merely as guideline and applied only when it is likely that the ordinary United States purchaser would stop and translate the word into its English equivalent. Thus, use of a term such as ‘LA POSADA motor hotel’ would not be generic or descriptive even though ‘la posada’ is roughly equivalent to the English word ‘the inn’.

If the foreign word is very similar to English equivalent such as OPTIQUE for eyeglass, AROMATIQUE for toilet water or SELECTA for beer, it would be descriptive under the rationale of the misspelling rule. Or, for some products, American customers are familiar with an often used foreign term, such as ‘Blanc’ for white wine and champagne. Similarly, if the product is specifically directed to an ethnic customer group in the United States, such customers are may be likely to take the foreign word in its original meaning such that translation for trade mark purposes is appropriate. Thus, if canned ham is directed at a Polish speaking market, use of the phrase MARKA DOBRA SZYNKA meaning mark of a good ham would be treated as descriptive.”

Based on this discussion, the High Court rejected the contention of the Defendant and provided relief to the Plaintiff. Therefore, for applications of this doctrine in the Indian context, the applicant has to prove that the word(s) applied for registration, is/are from a contemporary language which when translated to English will lead to the likelihood of confusion as marks with similar meanings already exist in the TM Register.

Image: from here

 

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