A strong brand breaks the language barrier; foreign language trademark refused in Canada | Smart and tall
Unlike in the United States, brand names in foreign languages are not automatically protected in Canada. No “foreign equivalents doctrine” exists to extend a trademark owner’s monopoly across linguistic lines. This makes even famous brands vulnerable to poaching, with translations of well-known brands like KRAZY GLUE stolen from owners in the past.
However, a recent case involving Coca-Cola shows it is possible to overcome the language barrier with the right protections.
This article explores strategies to help brand owners stay on top of their top brands in all languages.
In 2017, an applicant based in China applied for registration of the following logo (no. 1874390) for use in association with a variety of food and beverage products, including non-alcoholic beverages:
The brand’s characters are Chinese, transliterating as “pan pan” and meaning “hope; long for; expect; see.”
The claim was contested by Coca-Cola.
In the following case of Coca-Cola Limited v Fujian Panpan Foodstuff Co., Ltd., 2020 COMM 179, the Trademarks Opposition Board agreed that there was a likelihood of confusion and dismissed the application. In the key passage it is written:
“Although the characters of the Applicant’s Mark are not recognizable by a unilingual English, unilingual French or bilingual English/French consumer…given the composition of the Mark as a whole, a Canadian consumer may think that the Mark is simply one of the Opponent’s Marks. marks represented in another language.
Importantly, it was not the word mark COCA-COLA that prevailed. Rather, the company’s success relied “mainly” on the WAVE DESIGN logo that it registered as an independent brand in 1992:
Coca-Cola’s registration for its signature logo, pictured below, gave the company a second basis for successfully opposing the application:
The board found that there was also a likelihood of confusion when examining the full logo, as the Chinese characters of the appellant’s mark were represented in a font similar to that used by Coca-Cola.
Tips for Brand Owners
The Coca Cola the case highlights the importance of seeking trademark protection for more than just your brand name.
Anything that can identify your business – or cause problems if misappropriated – should be registered and protected as a trademark. This includes:
- logo components
- product forms
- sounds, textures and even smells.
This scenario also highlights the benefit of vigorously Monitor the landscape for problematic trademark applications involving brand elements that you have protected, or that could pose a threat or be easily confused with your trademarks. Nowhere in the denied application referenced above do the words COCA or COLA appear, meaning that a simple keyword search would not have drawn the company’s attention to the mark.
Finally, trademark owners should consider whether it is worth using and registering their keyword trademarks in foreign languages. There is no “foreign equivalents doctrine” in Canada. While the generic names of goods and services cannot be registered in any language, translations of brand names are not automatically protected. In the most famous case, a third party won rights to the Spanish name KRAZY GLUE (“KOLA LOKA”) because the court found that there was “no resemblance” between the two brands in terms of appearance or sound (Krazy Glue Inc v Groupe Cyanomex SA de CV (1992), 45 CPR (3d) 161 (FCTD)).
That said, Canada recently added “bad faith” as a new ground for opposing requests. Whether the deliberate adoption of a translated mark constitutes bad faith remains an open question.
In the age of counterfeiting and brand trolls, brand owners are right to wonder if their brand portfolio will protect them against clever counterfeits and foreign translations. Protect everything Source indicators are the surest method of defense to protect brands.