22.11. Words in languages other than English

The same principles apply to trade marks consisting of non-English words as with English words, in that it is their ordinary signification which is to be considered. In Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the majority discussed foreign words at [45]:

45.  Establishing the "ordinary signification" of a trade mark consisting of a word is just as critical if the word is to be found in a dictionary of a foreign language. This is particularly so when an objection to registrability is based on an assertion that the mark is not an invented word because it makes direct reference to the character or quality of the goods in question. The Solio Case [1] concerned the registrability of "SOLIO" for photographic papers. It had been contended that "solio" (a word in Italian and Latin) was not an invented word and moreover was a word containing a "reference" to the goods. Lord Macnaghten stated the principle to be applied to a word put forward as an invented word:

If [a word] is an invented word, if it is 'new and freshly coined' (to adapt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think that it is necessary that it should be wholly meaningless.

46.  That was followed by Parker J (as his Lordship then was) in Philippart v William Whiteley Ltd [2] ("the Diabolo Case") when he found a trade mark consisting of the Italian word "diabolo" unregistrable, because it applied to a well-known game in England called "the devil on two sticks", for which reason it could not be treated as an "invented word". Parker J explained:

"To be an invented word, within the meaning of the Act, a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate any obvious meaning, to ordinary Englishmen."

47. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [3] ("Howard") [(1946) 72 CLR 175; [1946] HCA 15], Dixon J stated what was required for a word to qualify as an invented word. Citing Lord Macnaghten in the Solio Case, his Honour said that although a word should be:

...substantially different from any word in ordinary and common use ... [it] need not be wholly meaningless and it is not a disqualification 'that it may be traced to a foreign source or that it may contain a covert and skilful allusion to the character or quality of the goods.

Importantly, at [48] they state:

These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

[1] Eastman Photographic Materials Company v Comptroller-General of Patents, Designs, and Trade-marks [1898] AC 571 (“the Solio Case”),

[2] Philippart v William Whiteley Ltd [1908] 2 Ch 274 ("the Diabolo Case")

[3] Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175; [1946] HCA 15 ("Howard"),  

It must therefore be determined whether the non-English language trade mark conveys a meaning to those who will be concerned with (being those involved in the purchase, consumption and trade of) the relevant goods or services. This will then inform the question of whether the trade mark is one which is likely to be needed by other traders. An example of this can be found in Maxam Food Products Pty Ltd, Re [1991] ATMO 12, where the words “La Deliziosa”, Italian for “the delicious one”, were refused on the basis that their meaning would be transparent to the general public, and recognised as a laudatory expression in relation to foodstuff goods by large numbers of ordinary Australians.  

If the non-English word does not convey a meaning to those who will be concerned with the relevant goods or services, then the trade mark is to be inherently adapted to distinguish. 

11.1  Combinations of multiple languages

When a word/s which lacks inherent adaption to distinguish is combined with word/s in another language which have the same or similar meaning the resultant combination may also lack inherent adaptation to distinguish the applicant’s goods or services, especially in trades where it is common to include indications regarding characteristics of the goods/services in multiple languages – for example:

Trade marks rendered in Roman characters which are comprised of more than one language, except when the word/s or character/s have the same or similar meaning, will generally be prima facie capable of distinguishing. A trade mark's inherent adaptation to distinguish increases when it contains a combination of different languages, as the likelihood of other traders already using or desiring to use that particular combination without improper motive is more unlikely.

11.2 Non-Roman Characters and s41

When considering applications for trade marks containing non-Roman characters, the tests for assessing whether the trade mark is capable of distinguishing are the same ones used for any other kind of sign.  However, non-Roman characters are unique in the sense that they will not be readable to most Australians and they are unlikely to be perceived as distinctive or memorable devices.

Assessing the distinctiveness of a trade mark requires a “practical evaluative judgement about the effects of the relevant mark in the real world”. (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 at [47]) and this is especially true of trade marks containing non-Roman characters.

Ordinary Signification of Non-Roman Characters

In Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (‘Cantarella’), the High Court stated at [48]:

These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

It follows that examiners must consider the ordinary signification of the trade mark to any persons in Australia concerned with the goods. This target audience may be a small section of the population who are able to understand the words and consideration must be given to the context in which the trade mark will be used (Re HongKong & Shanghai Banking Corp Ltd Application (1990) 19 IPR 223).

Unlike foreign words written using the Roman alphabet, most non-Roman characters will be unable to be read or recalled by a majority of Australians. It is therefore reasonable to assume that for trade marks containing non-Roman characters, the target audience is likely to be those persons in Australia who are able to read, write, and/or understand the non-Roman characters.

Consideration should be given to what the ordinary signification of the trade mark will be to consumers in the target audience, rather than the general populace.

In practice, this means that if the relevant audience of the trade mark will understand the non-Roman characters in question, the normal tests for distinctiveness should be applied to the translated meaning of the mark.

This reasoning applies to trade marks containing only non-Roman characters, as well as trade marks which contain a combination of Roman and non-Roman characters.

See also: Re Applications by LEE MAN TAT and LEE MAN LOK (t/a LEE KUM KEE) (1988) 12 IPR 212 (‘LEE KUM KEE’))

Likelihood of other traders wanting to use non-Roman character trade marks

Once the ordinary signification of the trade mark to the relevant audience has been established, examiners must assess the likelihood of other traders wanting to use the mark, or something so nearly resembling it. As stated by the High Court in Cantarella at [71]:

If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.  However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.

Examples:

Pinyin

Unlike non-Roman characters, non-English words written in Roman characters can be read, understood and easily memorised by the majority of Australians, even if their translated meaning is unclear. As a result, the distinctiveness of trade marks consisting only of pinyin should be assessed in the same way as all other non-English words rendered in Roman characters.