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When filing your trade marks overseas, it is prudent to consider whether it is necessary to file translations and/or transliterations into the local language/script. A trade mark registration in one language will not automatically give you the right to prevent third parties from adopting a translation or a transliteration of your mark.
As Trade Mark Attorneys in the EU, which has 24 official languages, it is not usual for us to have to think about the similarities and differences between trade marks in multiple EU languages. Over the years, EU case law has developed a body of law surrounding trade marks which are translations of each other in different EU languages in the context of contentious trade mark matters. Perhaps more unusual for us is dealing with transliterations into non-Latin script.
In many countries where a non-Latin script is used, it is common for trade mark proprietors file applications transliterations of their trade mark into the local language script. One reason for this is that in some countries a trade mark registration in Latin characters will not prevent a third party from adopting the transliteration of your trade mark in the local Script. The reason for this is often that the Latin script and local script marks are not considered to be visually, phonetically and/or conceptually similar. This is the position adopted in the EU, China and Russia to name a few examples.
When preparing the transliteration, there are a number of issues you should be aware of, including:
Many languages use the same set of characters, which means that your mark might have multiple meanings depending on the language of the reader. As an example, a large number of local languages in China use the same script and a mark in Chinese characters might have different meanings to readers in different parts of China. It is usual to choose a mark which will be understood by a speaker of the dominant language in a particular country, but watch out for negative or offensive meanings in other dialects.
There is more than one way to transliterate a word into a local script.
One way is to adopt a phonetic transliteration by choosing local script characters which give the same, or a similar sound.
Another way is to adopt a meaning, which could be a description of your business or a positive trait you want to be associated with your brand, and choose local script characters that represent that meaning. As an example, The Beatles are known in China by the name 披头士, which purportedly means something like “the mop-headed”, or “men whose hair hang down loosely”.
If adopting a phonetic transliteration, it is wise to check that your chosen mark doesn’t have negative connotations in the local language. Before Coca-Cola adopted an official transliteration in China, many local businesses adopted phonetic transliterations of the brand with bizarre meanings, including ‘bite the wax tadpole’. Coca Cola has since adopted a transliteration with the more appealing meaning ‘permitting the mouth to rejoice’.
Consistency is important. If you conduct business in a country which uses a non-latin script it is likely your mark will have been transliterated as part of business documents, particularly if your marks forms a part of your company name. It is best practice to choose a transliteration and then use it consistently in every context (whether as a company name or a trade mark) unless there is a justifiable reason to depart from it. This will help consumers to recognise the transliteration as identifying your company. It will also avoid administrative problems which can be caused by discrepancies in the transliteration.
It is always best to seek advice from a native speaker before settling on a transliteration. If you are considering trade mark applications in a country which uses a non-latin script and would like further advice, please contact a member of our Trade Mark team who will be happy to assist you.