By Peter Stevens
The following article by Peter Stevens was first published in Volume 6, Issue 1 of the Intellectual Property and Entertainment Law newsletter of the International Bar Association (September 2014)
It is well known that a trade mark must be of distinctive character, in order to distinguish the origin of the goods or services of its proprietor from those of others. In other words, one cannot register a trade mark which consists exclusively of signs or indications which are purely descriptive, because it would not be fair to enable anyone to obtain an effective monopoly in the use of common words which simply describe the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or services in question without identifying them as the goods or services of the proprietor of the mark in question.
But what is the position with foreign words or expressions, which are purely descriptive in their own languages? Can these be registered as trade marks in the UK?
The UK Intellectual Property Office has published guidance on this question, which summarises the practice as follows:
1. The key question is whether the mark is likely to be understood by the relevant UK traders, or by the average UK consumer of the goods or services in question, as a description of one of their characteristics, or as otherwise descriptive of such goods or services. If so, it will not be registrable as a UK trade mark. If not, it will.
2. The relevant UK traders are those who trade in the goods or services in question. For example, a pharmacist may recognise the descriptive meaning of a Latin name, and a wine trader may have a better understanding of French wine descriptions, so Latin words for pharmaceutical products and French descriptions of wine would not be registrable as UK trade marks for these products, even if the average UK consumer of those products would not understand what they mean.
3. French, Spanish, Italian and German are the most widely understood European languages in the UK, but UK consumers are not assumed to be fluent in any of these languages. However, most of them will have some appreciation of the more common words, particularly common French words, in the relevant market. So for example, it will be assumed that the average UK customer for dog biscuits would understand that "BISCUITS POUR CHIEN" means dog biscuits, and that traders in and/or average UK consumers of cosmetics will be accustomed to seeing French descriptions on the packaging of cosmetics, and so will know that "lait" means milk and be able to guess that "LAIT HYDRATANT" means something like moisturising milk. Accordingly, these terms would be recognised as purely descriptive and not registrable in the UK.
4. 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 we know as Burgundy, and that "VIN ROUGE" means "red wine", and the average UK consumer of olive oil is likely to know that "TOSCANO" is the Italian word for the region we know as Tuscany. Consequently, "BOURGOGNE" and "VIN ROUGE" would not be registrable in the UK for wine, and "TOSCANO" would not be registrable for olive oil.
5. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is to be understood as descriptive by the average UK consumer. So for example, the Italian word ‘CAFFE’ will not be registrable as a UK trade mark for coffee because the average UK consumer of coffee would be likely to guess that it simply means ‘coffee’.
6. Non-English words are more likely to be understood in the UK as descriptive words in the case of goods than of services so, with some exceptions, non-English words are more likely to be registrable for services than for goods, even where their meaning is reasonably well understood by the relevant average UK consumer. For example, the average UK caterer may know that "PRET A MANGER" means "ready to eat", but he is unlikely to use this term in a purely descriptive sense, whereas someone in the clothing trade would use the term "PRET A PORTER" to describe ready to wear clothing. Accordingly, "PRET A MANGER" would be registrable for catering services, when "PRET A PORTER" would not be registrable for clothing products.
7. The Registry will take into account whether the average consumer or end user of the particular goods in question is more likely to understand the language of the mark than the average UK consumer. For example, I understand that yashmak sellers will commonly market them under the mark "خ" ("imar" in Arabic, or “yashmak” in English). Most English people do not understand Arabic, but yashmaks are primarily worn by the Arabic speaking community so the relevant average UK consumer for yashmaks will understand the mark "خ" as being descriptive of yashmaks and the mark "خ" will not be registrable in the UK for such products.
8. Once a foreign word has become generic in the relevant trade (by customers or traders) it will be regarded as purely descriptive and so not be registrable. For example, even if these terms might have been registrable in the past, "PANINI" is now widely recognised as the Italian word for sandwiches, and "BAGUETTE" is similarly understood to refer to French stick loaves of bread, so neither would be registrable now.
The proprietor of a registered trade mark is entitled to prevent all third parties from using in the course of trade, without his consent:
(a) any sign which is identical to the trade mark in relation to goods or services which are identical to those for which the trade mark is registered, and
(b) any sign which is:
(i) identical to the mark in relation to goods or services which are similar to those for which the mark is registered; or
(ii) similar to the mark in relation to goods or services which are identical or similar to those for which the mark is registered;
if, as a result, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
In 2007, Pho Holding Limited, a British company which traded under the name “Pho Vietnamese café, registered the mark “pho” for, among other things, restaurants, cafes and catering services. Pho is the name of a Vietnamese soup made of beef noodles. Vietnamese dishes may be better known in France than in the UK, and it is possible that they will become better known in the in the UK in the future. However, it is clear that, in 2007, the word “pho” was not widely recognised in the UK as the description of a Vietnamese soup. In October 2013, Pho Holding Limited was able to force the owner of a small Vietnamese restaurant in London, which had traded for some years as “Mo Pho” to change its name. The latter agreed to its demands because it would have cost much more to challenge its trade mark registration and counterclaim for its revocation.
Similarly, a trade mark cannot be registered if it is:
(a) identical to an existing registered trade mark covering identical goods or services; or
(i) identical to an existing registered trade mark covering similar goods or services; or
(ii) similar to an existing registered trade mark covering identical or similar goods or services;
and, as a result, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
Accordingly, a related question is whether the owner of an English trade mark can prevent the registration of another mark comprising foreign words which are visually or phonetically similar, whether the meaning is similar or different.
In 2009, the English company The Hut.com Limited applied to register the mark “HUT” as an EU community trade mark for retail services related to the sale of various products. Intersport France opposed the application, because it had already registered “LA HUTTE” in France in respect of similar products.
The European Court of Justice decided in January 2014 that the average consumer of the goods or services in question was the average consumer in France, where the existing mark had been registered, and that an assessment of whether the visual, phonetic or conceptual similarity of the two marks created a likelihood of confusion had to be based on the overall impression given by the marks.
There is no presumption that the vocabulary of a foreign language, except for very basic words, will be understood in another country, and a substantial part of the relevant public in France would not know the English word “hut” as this has no meaning in French. However, given their imperfect knowledge and command of English words which are not part of the basic vocabulary, a not insignificant part of the French public might be expected to pronounce the English word “hut” in the same way as the French word “hutte” and, without knowing its meaning, might correctly guess that it would be translated in French as “hutte”. The terms “la” and “the” are phonetically different, but “the” is part of the basic English vocabulary, and the average French consumer would understand that it means the same as “le” or “la” in French. In any event, when assessing the overall impact of a mark, the definite article is usually of lesser importance.
Accordingly, the marks “HUT” and “LA HUTTE” were considered identical conceptually and similar phonetically and, to a lesser extent, visually. Based on an overall impression of these similarities, and taking into account the similarity of the goods and services in question, the European Court decided that the risk of confusion on the part of the French general public could not be excluded, so the application to register “HUT” as an EU Community Trade Mark had to be refused.
TWM Solicitors LLP
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