Registration of Trademarks in Foreign Languages: Indian Perspective
In India, a trademark can be registered in any regional or foreign language. The representation of a mark that includes words in a language, other than Hindi or English and characters others than Roman or Devanagari are registrable under Indian law by virtue of Rule 28 of Trademark Rules 2017. Rule 28 states as follows,
“Transliteration and translation – where a trademark contains one or more words or numbers in scripts other than Hindi or English, the applicant shall provide in the application, a precise transliteration and translation of each such word and number in English or in Hindi and state the language to which the word(s) or number(s) belong.”
As per the Rules, where a trademark contains words in a language other than Hindi or English, an adequate transliteration into roman script and translation of each of such word in English shall be mentioned in the trademark application and the applicant is also required to mention the foreign language in which the word is represented. In the event that such transliteration or translation is not submitted, even after being requested by the Registrar in the examination report, the application shall be deemed to have been abandoned. This is considered as a mandatory rule and must be followed in order to proceed with the registration of a trademark.
Descriptive nature of English equivalents
Trademarks in foreign languages or other regional languages can be certainly registered in India. However, the problem arises when the English equivalents of the mark represented in foreign language are descriptive words. US courts have enunciated and followed the Doctrine of foreign equivalents to test the descriptive nature of the mark under which foreign words are translated into English. The Indian Judiciary however, while dealing with such cases, has followed different rules to assess the descriptiveness of marks.
The Bombay High Court in Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (1998) has discussed the rules/test to determine the descriptive nature of a mark represented in foreign language. The Court explained that under the ‘doctrine of foreign equivalents,’ words in a foreign language are translated into English and then tested for descriptiveness or genericness. However, the ‘doctrine of foreign equivalents’ is not an absolute rule, for it does not mean that words from dead or obscure languages are to be literally translated into English for descriptive purposes. The test is whether, to those buyers familiar with the foreign language, the word would have a descriptive connotation. Foreign words from dead languages such as Classical Greek, or from obscure languages such those of the Hottentots or Patagonisans might be so unfamiliar to any segment of the buying-public that they should not be translated into English for descriptive purposes. However, words from modern languages such as Italian, French, Spanish, German, Hungarian, Polish etc. will be tested for descriptiveness by seeing whether the foreign word would be descriptive to that segment of the purchasing public which is familiar with that language. Further, the court opined that A rigid, unthinking application of the ‘doctrine of foreign equivalents’ can result in a finding quite out of phase with the reality of customer perception. The doctrine should be viewed merely as guideline and applied only when it is likely that the ordinary purchaser would stop and translate the word into its English equivalent.
However, the Bombay High Court in 2014 in C Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar Refineries Pvt. Ltd, did not apply the doctrine while deciding the case and was of the view that the marks which are borrowed from a foreign language and commonly used in India can be held descriptive in India but not otherwise. The foreign words in a mark which are not commonly used in India or where the people buying the products under such mark are not likely to know the meaning of the foreign word, such marks cannot be said descriptive in nature.
The Trademark Laws in India, more or less works on the same principle for the registration of foreign or regional language marks as for any other mark which is in English or Hindi, though there are few procedural differences in filing the trademark application. If the English equivalent of words or characters of a foreign language mark are descriptive, then the registration of the mark becomes difficult; but the descriptive nature of such marks can be mitigated if the English equivalent of the mark is only known to a small group of people in India. Nevertheless, the registration of such marks is always dependent on several factors including the extensive usage of the mark or if the mark in question is a well – known trademark or a device mark.