We are pleased to publish 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 be considered a brand in France. You describe a case in which a company called Krampouz, which makes plates for cooking crepes, registered the brands “KRAMPOUZ” and “KRAMPOUZ BILLIG”. The word “Krampouz” means crêpe in Breton, and “cheap” refers to the cast iron plate on which crêpes are traditionally cooked. As they explain, such marking of terms in the national language, which would be general in a translation, 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 the registration of Breton or other local languages as trademarks usually fail because the average consumer does not understand their meaning:
“To the best of our knowledge, the argument that a mark can be described in a national language has never been accepted in order to cancel a mark, as the judges emphasize that the mark is a right of national scope and that its validity is judged by the average French consumer who generally knows no regional languages. For example, in a recent case against the ELV UP and EVEL’UP brands, the owner of EVEL’UP alleged that this term refers to a word in the Breton language that means “the same” to translate the fact that the new structure was in place brought two existing units together. The Rennes Court of Appeal rejected the argument, stressing that “the average consumer, in this case the breeder who is likely to be interested in these products and services, is not necessarily Breton and, even if he does, does not necessarily speak that language; In addition, the word “EVEL’UP” is not part of the Breton vocabulary that is commonly used by the non-Breton public, unlike other terms known throughout France such as “Kenavo” or “armor”. ” the original)
Similarly, in the United States, foreign words that would otherwise be generic may be relevant to trademark registration. When a trademark is in a foreign language or dialect, courts and the US Patent and Trademark Office apply the “Foreign Equivalents Doctrine”. According to this teaching, the word is translated first. It is then checked that the typical consumer would understand the word to have the translated meaning.
For example, an applicant selling cheese could try to register the Spanish word ‘queso’ which means cheese. Under the doctrine of foreign equivalents, the word would be translated into English first. It would then be examined whether typical (or applicable) consumers are likely to understand the word “queso” as “cheese”. Since Spanish is a common language in the United States and many Americans are familiar with the word “Queso”, it is likely that this word will not be able to be registered as a US trademark.
However, if the language or dialect of a proposed trademark is less widely understood in the United States and consumers are unlikely to be familiar with the word, registration might be appropriate. For example, it is often possible to register Japanese characters that are not commonly known in the United States as trademarks.
For companies with an international reach, it is worth considering whether and where a potentially generic trademark could be registered.
© Copyright 2021 Squire Patton Boggs