We are delighted to share an interesting article by our colleagues in France, Catherine Muyl and Marion Cavalier, about whether and how a common word in a regional dialect can qualify as a trademark in France. They describe a case where a company named Krampouz that makes plates for cooking crepes registered the marks “KRAMPOUZ” and “KRAMPOUZ BILLIG.” The word “krampouz” means crêpe in Breton, and “billig” indicates the cast iron plate on which crêpes are traditionally cooked. As they explain, such trademarking of local language terms that would be generic if translated can be successful under French law. As explained here, this approach can also be successful under US law.
Under French law, and as explained by our colleagues, attempts to invalidate registrations of Breton or other local languages words as trademarks usually fail because the average consumer does not understand their meaning:
“To our knowledge, the argument of descriptiveness in a local language has never been accepted to cancel a mark because the judges stress that the mark is a right of national scope and that its validity is assessed according to the average French consumer who, in general, does not know regional languages. Thus, in a recent case opposing the brands ELV UP and EVEL’UP, the owner of EVEL’UP had pleaded that this term referred to a word in the Breton language meaning ‘the same thing’ to translate the fact that the new structure had brought together two existing entities. The Rennes Court of Appeal rejected the argument, stressing that ‘the average consumer, in this case the breeder likely to be interested in these products and services, is not necessarily Breton and, even supposing that he is, does not necessarily speak that language; in addition, the word ‘EVEL’UP’ does not belong to the Breton vocabulary commonly shared by the non-Breton public, unlike other terms well known throughout France such as ‘kenavo’ or ‘armor’ for example.’” (translated from the original)
Similarly, in the US, foreign words that would otherwise be generic can quality for trademark registration. When a trademark is in a foreign language or dialect, courts as well as the United States Patent & Trademark Office apply the “doctrine of foreign equivalents.” Under this doctrine, the word is first translated. It is then considered whether the typical consumer would understand the word to have the translated meaning.
For example, an applicant that sells cheese might seek to register the Spanish word “queso,” which means cheese. Under the doctrine of foreign equivalents, the word would first be translated into English. It would then be considered whether typical (or applicable) consumers are likely to understand the word “queso” as having the meaning “cheese.” Since Spanish is a common language in the U.S., and since many Americans know the word “queso,” it is likely that this word would not qualify for registration as a U.S. trademark.
However, where the language or dialect of a proposed mark is less commonly understood in the US, and consumers are not likely to know the word, registration could be appropriate. For example, it is often possible to register Japanese characters, which are usually not commonly known in the US, as trademarks.
For companies that have international reach, it is worth considering whether and where a potentially generic mark might be registered.
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