Lost in Translation : its all GOLDEN BALL

While I was tweeting and the IPkat was posting, our new SOLO blogger, Sally Cooper was pondering ...
  

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There is cause for celebration this afternoon arising from the Decision in Case T‑437/11Golden Balls Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Intra-Presse [as summarised on IPKat] where (simplistically) GOLDEN BALLS prevails over BALLON D’OR.
     This writer was, for a number of years, involved in registered trade marks owned by a multi-national company with its Head Office in France – but had to work hard at language skills.
     She remembers (at a later date – still working on her language skills) seeing the UK Trade Marks Registry publish the mark JOLIE BIJOUX for goods in Class 14 including “jewellery; costume jewellery; fashion jewellery” http://www.ipo.gov.uk/tmcase/Results/1/UK00002398852 and thinking “Surely BIJOUX is JEWELLERY ?” and “Surely JOLIE is PRETTY ?”.
     She no longer has either the letter of Observations she wrote to the Registry at the time nor the Registry’s response (saying the mark was accepted / her letter of Observations made no difference), but this afternoon’s news has promoted her to revisit the Registry’s Manual on “Non English Descriptions which are most likely to be understood”.
     The current version says : “The average UK consumer may well be familiar with the non-English name of a product or service, or the local name for its geographical origin.
For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively”
     Key to this afternoon’s Decision (for this writer) is the part which says : “Due to the fact that the signs at issue are in different languages, a  manifest distinction is created between them so that ... the average  consumer will not immediately associate them without undergoing an intellectual process of translation ...".
     So maybe JOLIE BIJOUX for “jewellery” is OK after all. And perhaps we’re going to end up with more and more “Non English Descriptions” on the UK Register because (let’s face it) a lot of us are not very good at the “intellectual process of translation” ?

Hopefully this decision will have some impact on whether the revisions to the Directive and CTMR that I blogged about here to make translations of earlier marks into account as bars to later marks, are implemented or kicked into the long grass where they belong.

 

Lost in Translation : Trademarks

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One of the issues that often vexes me is why a word may be registrable as a trade mark in Europe but not in the US or, far more commonly, vice versa. A change that the European commission intends to introduce to both the Community Trademark Regulation and to the Directive in the current revision proposals may bring some harmony in the area of foreign language marks. This is an extension to the absolute grounds for refusing a trademark to allow an objection such as descriptiveness to be raised notwithstanding that the grounds of non-registrability obtain only where a trademark in a foreign language or script is translated or transcribed in any script or official language of a member state.
There is also going to be an obligation on applicants to provide a translation or transcription.
Now this may make sense for the European problem of having community registrations for composite mattress marks from Germany refused because of the now highly distinctive and famous MATRATZEN registrations in Spain, but does it go too far? Will Chinese and Arabic marks  highly distinctive in Europe suddenly find themselves refused as descriptive. Will we find that our invented words are considered to be transcribed versions of Chinese characters. This new absolute ground could be quite a nightmare and it certainly attracted most interest at the Marques conference on Monday.
They already have this rule in America but it isn't an absolute embargo as this legislation seems to impose.  The "ordinary American purchaser" has to be likely to stop and translate the foreign words into its English equivalent. While it seems fair that a community trademark as a unitary right should be denied registration if they can't be distinctive across the whole of the European Union, why do we have to put this into national legislation? Is the British consumer to be denied hypothetically descriptive marks in the Greek script?  The Max Planck study concluded that there was no need to clarify or otherwise amend article 7 (2) CTMR but it seems the commission disagrees. While no doubt this may be a welcome change for the minority languages spoken in Europe which are not recognised as official languages so dont get considered in Alicante towers, it does seem a little overwhelming to protect every language in the world in this way.
The objection can be overcome by acquired distinctiveness but we all know that that is very difficult to prove. If nothing happens, the brand creators will have to move all those obscure languages dictionaries from their creative resources to the desks of those who try to clear their suggestions. If your trademark can be translated better get it registered in Europe while you can and don't forget to use a great value solo practitioner to help you.