Australian trade marks lost in translation

Two recent Australian trade mark decisions have considered how well Australian consumers would understand the meaning or pronunciation of foreign language words.

In both cases, it is perhaps surprising given the multicultural make-up of Australia, that languages with large numbers of native speakers such as Italian and German, are being described as “not so widely spread” that the words of these languages would be generally understood, or as being “unfamiliar” to English speaking Australians.

In the first decision, the High Court of Australia confirmed that determining whether a trade mark is “inherently adapted to distinguish” (section 41(3), Trade Marks Act 1995) requires consideration of the “ordinary signification” of the words proposed as the trade mark “to any person in Australia concerned with the goods to which the proposed trade mark is to be applied”:

“Once the ‘ordinary signification’ of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it”[1].

The High Court affirmed the approach of the primary judge as the goods of interest (coffee) are a commodity and familiar beverage consumed by many:

“ORO and CINQUE STELLE were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods”[2].

Many non-English languages use diacritical marks such as the acute, grave, cedilla, tilde, macron, and umlaut. Such marks affect the pronunciation of the letter and therefore the word.

In the second decision, when considering whether BÜSE was deceptively similar to BOSE (section 44, Trade Marks Act 1995) the Hearings Officer found that Ü in the word BÜSE:

“being an unfamiliar character not contained in the standard Latin alphabet with which most Australian consumers would be familiar, constitutes a significant point of differentiation between the trade marks, and is not something that is likely to be ignored or elided from the word. It also significantly alters the pronunciation of the Holder’s mark (similar to “muse”) as compared with BOSE (similar to “rose”)”[3].

Elena Szentivanyi - 6 January 2015

[1] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (3 December 2014) at paragraphs 70 - 71

[2] Cantarella Bros, at paragraphs 72 - 73

[3] Bose Corporation v Heino Buse MX Import GmbH [2014] ATMO 110 (18 November 2014) at paragraph 37

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