Foreign Language Words as Trade Marks in the UK and EU
Over the last decade a growing number of overseas businesses have been expanding into the UK and EU, and a lot of them are targeting the nationals of their countries that currently reside here. A question therefore arises – can an overseas business register a UK/EU trade mark in their own language using non-Roman alphabet?
According to the UKIPO and EUIPO guidelines, the words in foreign non-Roman languages can indeed be registered as a trade mark. However, there are a number of points to bear in mind when applying to register a brand name in foreign characters:
- Word mark or figurative mark?
Since the brand name is a word, albeit in a foreign language, one might think that the trade mark should be characterised as a ‘word mark’. However, both EUIPO and UKIPO consider marks consisting of letters from non-Roman alphabets as figurative marks. Therefore, a graphical representation of the foreign word will be registrable as a trade mark.
A sign must possess distinctive character in order to be registered as a UK trade mark or as an EU trade mark: it must be able to identify the goods and/or services as originating from a particular undertaking, and to distinguish that goods and/or services from those of other undertakings.
Generally, words in foreign languages will be considered distinctive for trade mark purposes, unless, theoretically speaking, they consist of a symbol/word that is too short (for example, Arabic symbol ) or too long (such as Arabic word أفاستسقيناكموها ) to be perceived as a trade mark by consumers. However, each trade mark application is considered on a case by case basis, therefore, depending on the examiner’s view even short or long words or phrases might be allowed for registration as a trade mark.
A trade mark must also be non-descriptive to be accepted for registration, i.e. it must not consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
On the one hand, the UKIPO states that even if foreign words translate as something descriptive for the goods/services, this will not be recognised by the average UK consumer, and therefore, they will generally be considered non-descriptive.
On the other hand, if the goods/services are, by their very nature, aimed at the specific ethnic group, such descriptive marks will be refused as they will be recognised by that consumer. For example, the Arabic characters for ‘yashmak’ (خمار) would clearly be descriptive for `yashmaks’ (a type of outer clothing), and therefore if the application for ‘خمار’ purports to cover ‘clothing’, it will not be accepted for registration.
If you are considering protecting your brand in a non-Roman language and would like to discuss how best to go about it, whilst avoiding the obvious pitfalls, please feel free to get in touch with us on 020 7288 6003 or [email protected] to arrange a free call or meeting with one of our lawyers.
Written by Anastasia Troshkova, Solicitor