Can You Trademark Translations?

Published date07 July 2022
Subject MatterIntellectual Property, Trademark
Law FirmPhoton legal
AuthorMr Prayank Khandelwal and Anushree Capoor

Introduction

India is a multi-lingual country with over 19,500 languages and dialects spoken across the nation. The Constitution of India recognised 22 official languages. In a country so rich in languages, it is natural for establishments to register their brand names or marks in their regional language or in the language familiar by their target market. An issue however arises when two businesses dealing with similar or identical goods or services have trademarks that are translations of the same word in different languages. For instance, a feud arose between Hindustan Unilever (HUL) and TG Balaji Chettiar 1 for their soaps with trademarks representing the sun. HUL had trademarked 'Sunlight' whereas Balaji Chettiar had trademarked the Tamil word 'Surian meaning sun. Since both marks essentially represented the sun, the Court held that use of 'Surian' was deceptively similar and was bound to create confusion amongst consumers.

Indian Trademark law

Indian trademark law permits trademarks to be registered in regional as well as foreign languages. The Indian Trademarks Act, 1999 permits trademark filing in any language as long as such language is specified and a precise translation and transliteration of each word is provided in Hindi or English 2. Such translations and transliterations have been mandated to identify if the same word has already been registered in any other language. However, since every word in every language has various synonyms, translated words are often not caught in the trademark search, as a result of which infringing trademarks are granted.

Judicial Pronouncements

Globally, one of the first cases wherein translations were held to be deceptively similar was the Golden Fan case. 3 In this case, an application was filed for a Burmese expression "Shway Latoung Fasai" which translated into Golden Fan Brand in English. The examiner observed that a similar product was already registered as the Golden Fan Brand and refused to grant the trademark. The Court upheld the decision and observed that "if the meaning of the foreign language mark was a mere verbal description of a mark already on the register, it could not be permitted to coexist." This decision has been applied in toto in various cases in India. In the case of JC Eno v Vishnu Chemical Co 4, the product being sold was effervescent saline and Eno has registered its trademark as 'fruit salt'. On the other hand, Vishnu Chemicals sold their product under the Marathi name 'Falaxar' which...

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