Thursday 23 May 2013

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.

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