It is a primary requirement under trademark law that when determining if a trademark application is registrable, that the concerned mark is distinctive and capable of acting as a source identifier. However, in cases of trade marks which contain words of foreign language, there is a universal tendency of the Indian Trade Marks Registry to apply ‘The Doctrine of Foreign Equivalents’ while examining such a trade mark for its distinctiveness. The Delhi Court shed light on limitation on the use of ‘The Doctrine of Foreign Equivalents’ during examination of a trade mark containing words of foreign language and how to assess such marks on the question of their distinctiveness in Laboratories De Biologie Vegetale Yves Rocher Versus The Registrar Of Trade Marks C.A.(COMM.IPD-TM) 149/2021)
What is ‘The Doctrine of Foreign Equivalents’ – Doctrine of Foreign Equivalents under the Trademarks Law requires the Trademark Registry to translate foreign words to English in order to determine whether certain marks qualify for trademark registration or not.
In the present case, an appeal was filed against an order dated March 20, 2020, passed by the Senior Examiner of Trademarks, refusing the application of the Appellant. The Appellant had filed an application for the mark ‘COMME UNE EVIDENCE’ for the goods “Soaps; Deodorants for personal use; Fragrances; Essential oils; Shaving and after-shave cosmetic products; Toothpaste; Bath and shower cosmetic products; Hair care cosmetic products; Skin face and body care cosmetic products; Face and body suntanning cosmetic products; Hand and foot care cosmetic products; Make-up cosmetic products; Room fragrances (sprays, incense, potpourris, and scented wood); Scented products for use with linen and lingerie; Nail care cosmetic products” in class 3 under Application no. 2769385.
It is a fact that the Appellant’s trade mark “COMME UNE EVIDENCE” when translated as a whole from French to English means “as evidence”.
The impugned refusal order dated March 20, 2020 contained the following main grounds of refusal:
- The refusal was on ‘lack of distinctiveness’ criterion. The Senior Examiner held that the French words “COMME UNE EVIDENCE” the translation of which is “As an evidence” is descriptive in nature and not distinctive in feature.
- Reliance was placed on the judgment in the case of “Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (1998)” where 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 generalness.
- Relying on the said judgment, the Examiner concluded that French is a modern language and public is familiar with the term, so as a whole, mark is generic in nature, and does not have an inherent distinctiveness. It had further been stated that the mark is applied on “proposed to be used” and has not acquired distinctiveness.
The Hon’ble Court’s Observation:
While allowing the appeal in the present case, the Court revaluated the impugned order and the evidence on record, and observed that the Senior Examiner while relying upon the decision in Aktiebolaget Volvo of Sweden (supra), had failed to take note of the following observations: –
“Under the ‘doctrine of foreign equivalents’, foreign words 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 American buyers familiar with the foreign language, the word would have a descriptive connotation. Foreign words from dead languages such as Classical Greek or form obscure languages such those of the Hottentots or Patagonisans might be so unfamiliar to any segment of the American 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.”
The Court hence held that the ‘Doctrine of Foreign Equivalents’ does not have universal application and is not an absolute rule. The Court pointed out the subject mark is from French language, which is not commonly spoken in India, hence, the contention of the Respondent is not sustainable. The Court nonetheless went on to say that the subject mark is arbitrary combination of words ‘COMME’, ‘UNE’ and ‘EVIDENCE’, which, translated as a whole from French to English means “as evidence”. This translation cannot be considered to be devoid of distinctiveness or descriptive of goods falling under Class 3.
The Court also heeded that the Appellant’s trade mark is registered in various countries of the world including in France itself, where it was found to be a distinctive mark.
The Appeal was allowed, and the impugned order was set aside, holding that it was unmerited. The Application had been directed to proceed further. The Court also mentioned that the Appellant’s rights in subject mark shall be restricted to combination of words ‘COMME UNE EVIDENCE’ and no exclusive rights shall be granted on the any individual elements. The Court also mentioned that if there is any opposition to the said application, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
The Hon’ble Court has made important observation on the extent of applicability of the ‘Doctrine of Foreign Equivalents’ during examination of trade marks. The Court importantly heeded that the doctrine should be applied where the ‘purchasing public’ is familiar with that foreign language and the said word(s) of foreign language should appear descriptive or non-distinctive to that ‘purchasing public’. The Court rightly held that French language, is not commonly spoken in India, from which we can conclude that such words would not per se appear descriptive or non-distinctive to the purchasing public in India.
For the sake of further clarity, the Court did not refrain from holding that the subject mark is arbitrary combination of words ‘COMME’, ‘UNE’ and ‘EVIDENCE’, which, when translated as a whole from French to English means “as evidence” and that this translation cannot be considered to be devoid of distinctiveness or descriptive of goods falling under Class 3.