11. Words in languages other than English

Date Published

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 or not 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 however 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 likely to be inherently adapted to distinguish. In a United Kingdom case Burgoyne's Trade Mark (1889) 6 RPC 227, the word OOMOO was held to designate "choice" in an Australian Aboriginal language. Nevertheless Chitty J was of the opinion that the trade mark signified nothing to the ordinary English person.  In Kiku Trade Mark [1978] FSR 246, KIKU, the Japanese word for chrysanthemum, was found to be registrable in Ireland for perfumes and cosmetic preparations, under provisions similar to the Australian provisions. This was because the ordinary person in Ireland in 1978 would need to have the word translated from Japanese in order to know its meaning. These cases support the reasoning in relation to the relevant markets at the time however the Australian market and population may differ.

11.1  Trade marks in non-Latin characters or letters

Consideration of trade marks containing non-Latin characters or letters needs to take into account the typical person concerned with the goods or services. A ground for rejecting an application may exist where the trade mark applied for is rendered in non-Latin characters and the typical person concerned with the goods or services is likely to understand and/or apply a relevant meaning it, whereby the ordinary signification to them is something which is likely to be needed by others. Examples where this might occur include: newspapers targeted at specific portions of the community or translation services. In such situations, it is important to ascertain the meaning of the characters, including and considering translations provided by the applicant. The nature of the goods and/or services and whether other traders are commonly using or are likely to need to use the non-Latin characters or letters in connection with the particular goods or services should also be considered.


11.2  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 mark:Goods and or services:Section 41

Size

Taille

Talla

Boys' clothing; children's clothing; clothing; girl's clothingSection 41 ground for rejection appropriate. Taille is French for size. Talla is Spanish for size. Both languages are well known in Australia. In relation to the goods, Australian consumers are likely to see this as three references to the size of the goods and not a badge of origin as it is common for traders to present information, such as size, in different languages.
​​​​​​​Hair lotions; shampooSection 41 ground for rejection appropriate. The non-Latin characters appearing in the trade mark are Chinese for shampoo. In relation to the goods many Australian consumers are likely to see this as two descriptions of the goods and not a badge of origin.
Translation servicesSection 41 grounds for rejection appropriate. These characters/words represent ‘translation services’ in Japanese, Chinese (simplified), Chinese (traditional), Arabic, French and Spanish respectively. In the context of the services under offer, it is likely that the ordinary significance of the mark would be seen as indicating translation service to the typical person concerned with such services.

Trade marks 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.