MarkIt to Market - October 2018: Your brand -- keep (and protect) its "character"

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

Babbel.com has estimated that of the world’s approximately 7.5 billion inhabitants, 1.5 billion speak English, about 20% of the earth’s population.[1]  English is by far the most commonly-studied foreign language, and even in countries where English is not the dominant spoken language, it is often an official language of a country’s government.  That said (in English or otherwise), the world is an increasingly global marketplace, and brand owners would be wise to at least consider registering their Latin script marks in the language of important foreign markets, or in countries where brand-rights squatting is likely to occur.

Many of the considerations at play for protecting a mark in a foreign language are similar to those for an English-language mark. There are some key differences, though, so before taking your brand abroad in a foreign language, consider the following:

1. English to ________, and what does it mean?

First and foremost, determine what your mark will be translated or transliterated to in the foreign language of interest.  What may be a harmless term in English could be vulgar, offensive, or otherwise completely off-message in another language.  We all know the cautionary tale of the NOVA mark for one of Chevrolet’s cars it fared poorly in Spanish-speaking countries because the model name literally translated to “it does not go.”

This may be particularly challenging in Asian countries, such as Japan, which has a phonetics-based system of writing, or in China, which has a language comprised of characters having both sound and meaning.  For example, a number of spellings are possible for marks in Japanese, so take the opportunity, pre-adoption, to consider how consumers will pronounce your mark with respect to context-specific marketing communications and the like.

Similarly, because Chinese characters have an associated meaning, an English language mark will assume the meaning of the characters to which it is transliterated.  That meaning may be direct, relatively comprehensible, or completely nonsensical.  For example, before the Coca Cola Company launched its beverage in China, local retailers were using a transliteration of the COCA COLA mark that meant “bite the wax tadpole.”  The company ultimately landed on “K'o K'ou K'o Lê,” which means “permitting the mouth to rejoice” in Mandarin.[2]  The same applies to marks with numerals.  In Chinese culture, e.g., the number 8 is considered auspicious, because its transliteration sounds similar to “fa,” the word meaning fortune.  The number 4, on the other hand, is sometimes avoided due to its aural similarity to the word for death.

Regardless of language, the take-away here is to choose a translation/transliteration of the mark that conveys the appropriate message of the brand.

2. Search

Once you’ve decided on the proper translation or transliteration to be used, confirm that it is available for use and registration by searching relevant trademark registers, domain names, and common law databases.  The level of searching appropriate for a foreign language mark is often dictated by budget, so you may want to vary the level of searching commensurate with the period of expected use and importance of the mark to the product/service portfolio as a whole.  While most trademark counsel have access to foreign trademark records to conduct at least a preliminary search, consider an opinion by trademark counsel in the country of interest, particularly if the foreign language mark is for a product or service of great value to the company.

3. File, and file early in the “race” countries

If the foreign language mark is available, it’s best not to delay filing to register it, especially if you intend to do business in the short term, and the country of interest has a first-to-file system.  Unlike the common law system in the U.S., where trademark rights accrue through use, in many foreign jurisdictions, whoever files an application first secures rights to the mark. Filing, like searching, may be restricted by budgets, so consider filing an application for only core goods and services associated with the mark, rather than all offerings under the mark. By applying early, you may prevent a bad actor from obtaining priority over any application filed by you and squatting on your mark, which could prevent you from entering the foreign market, or cost you sums to gain possession of the foreign language mark.  And once your foreign language mark is registered, consider recording it with the local customs office to block the importation/exportation of infringing goods bearing the mark.

4. Register domain names

Akin to an English-language mark, consider domain name registrations for your foreign language mark, including domains in the relevant country code.  This, too, could thwart the actions of unscrupulous characters looking to hold your foreign language mark for ransom.

5. Include in agreements

Once you’ve selected and filed on your foreign language mark, be sure to include it in agreements with local distributors, licensees, and dealers, taking care to include provisions on proper use, enforcement, and ownership.

6. Control the message

Finally, consider a brand use guide to control the message conveyed by your foreign language mark, and distribute this guide to those who are authorized to use it.  This may be particularly helpful in countries where local laws require translations of marks and other information in advertising. 

This is a high-level list of some of the more important considerations for adoption and use of a foreign language mark, but there are others. With some thoughtful planning and protection, your brand should be able to garner recognition in a foreign language without it getting lost in translation.

[1] https://www.babbel.com/en/magazine/how-many-people-speak-english-and-where-is-it-spoken/

[2] https://www.coca-colacompany.com/stories/bite-the-wax-ta

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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