Monday 16 September 2013

Lost in Translation : its all GOLDEN BALL

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


1 comment:

  1. Today's ruling is also a triumph for one of the original "solos" -- Shireen Smith of Azrights is named in the judgment as solicitor for Golden Balls.