Breaking the language barrier: protecting brands in a foreign language

Registering a trade mark in foreign characters may not prevent a third party from registering the translation and transliteration equivalents. As a defensive measure and for ease of enforcement, brand owners should consider whether to file separate applications for these elements.

In Singapore, the issue of mark-similarity underpins various grounds for opposition. Under the step-by-step approach, the opposition fails once the marks in question are deemed dissimilar. Is a foreign language trade mark similar to a later filed trade mark that is essentially its translation or transliteration equivalent?

Translation

Under the Registry’s current examination guidelines, competing marks will only be considered similar if the earlier-filed foreign language trade mark is visually or aurally similar to its English equivalent. Following this approach, trade marks registered in non-Romanised characters (e.g. Chinese) may not stop a third party from registering its English translation equivalent, as non-Romanised characters by their nature would never be visually or aurally similar to Romanised characters. As a defensive measure and from an enforcement perspective, brand owners should therefore consider filing separate applications for such translation equivalents.

Transliteration

The examination guidelines are silent on transliteration equivalents. However, the Assistant Registrar’s observations in the decision of Inner Mongolia Little Sheep Catering Chain Co. Ltd. v Grassland Xiao Fei Yang Pte Ltd [2018] SGIPOS 6 may prove instructive.

This is the first time that the tribunal has had the opportunity to consider the issue of whether a later filed transliteration equivalent is similar to an earlier registration in Chinese characters. Although the Assistant Registrar did not rule specifically on this issue, his observations afford some guidance.

(i) Brief facts

The Applicant sought a declaration of invalidity against the word mark “XIAO FEI YANG”, registered in Class 43. The Applicant relied on its earlier registration for “ ” (the transliteration of these Chinese characters is “XIAO FEI YANG”) also in Class 43, and raised four separate grounds, including mark-similarity resulting in confusion and bad faith.

(ii) Mark-similarity

The word mark “XIAO FEI YANG” was found to be similar to “ “. The Assistant Registrar observed as follows:

• Since Chinese characters are by their nature different from letters in the English alphabet, Chinese characters would likely be visually dissimilar to their transliteration.
• Since the purpose of transliteration is to enable words in one language to be represented in another, Chinese characters would be aurally similar to their transliterations.
• Whether Chinese characters would be conceptually similar to their transliterations depends on the specific context and the characters in issue.

Based on these observations, it seems that a foreign language trade mark and its transliteration equivalent could be considered similar if both aural and conceptual similarities outweigh the visual dissimilarity. If so, a foreign language trade mark may prevent a third party from registering the transliteration equivalent (assuming the goods-similarity and likelihood of confusion requirements are met), and it may not be necessary to file a separate application for the transliteration equivalent.

(iii) Bad faith

The Proprietor’s adoption of the transliteration equivalent was held to be “conduct which fell short of the appropriate standard of acceptable commercial behaviour”. However, this finding must be understood within the specific context of the case having regard to the Assistant Registrar’s evaluation of the totality of the Proprietor’s conduct.

Key takeaways

• Brand owners should review their brand strategy and overall objectives, bearing in mind local language practices as well as how the foreign language trade mark is (or will be) used. They must decide whether their brand architecture ought to include foreign character variants, and whether to extend their portfolio to translation and/or transliteration equivalents.
• As the issue of whether a foreign language trade mark is similar to a later filed trade mark that is essentially its translation or transliteration equivalent remains undecided in a Singapore court of law, brand owners should consider filing separate applications for each of the expressions for optimum protection, especially if both the foreign characters and the translation and transliteration equivalents are used.
• In appropriate situations, the adoption of an exact transliteration of an earlier registered foreign language trade mark may call one’s bona fides into question.

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