Wednesday, October 1, 2014

Trademark of Non-English descriptive words


Trademark of Non-English descriptive words

The following practice will be adopted in dealing with applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive.  The U.K. Registry has established a practice that there are no grounds for refusing registration of trade marks on the basis that they are descriptive or non distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. The same practice will be followed by the Trade Marks Registry in India.  Accordingly if the foreign word is in a language that is not likely to be known to a significant proportion of the public in India, there will not exist any ground for objection that the mark is descriptive.  Consequently, the Examiner will only object to the registration of word marks which are likely to be recognized as a descriptive of the characteristic of the goods or services. The relevant trade in India consists of those in this country who trade in the goods or services in question.  

Non English Descriptions which are most likely to be Understood Again in general, the average consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Consequently, such names would be objectionable. This English practice could be well followed in India, if necessary by  reference to internet. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. 

Thus, for example the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average consumer of coffee would be likely to see that it simply means ‘fresh coffee’ Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 9(1)(c) of the Act. So the German word ‘auto’ is not registrable for motor cars or their parts and fittings, or related services.  The following language are likely to be known to a reasonable (and increasing ) number of Indian public. As such, descriptive use in any of these languages will be equally objectionable. Punjabi, Tamil, Bengali, Urdu, Hindi, Telugu, Oriya, Assamee, Rajasthani, Malyalam, Karnatak. Marathi, Gujarathi and English and scheduled languages under the constitution. Languages such as French, German, Italian, Spanish and Japanese are hardly known in India. Accordingly marks in such languages will be less objectionable.

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