One might think that using the foreign translation of a local generic or descriptive mark would be a shrewd hack to circumvent the non- registrability of such mark. But this would not work in most cases.

Under the doctrine of foreign equivalents, the foreign translation of generic or descriptive terms would be disallowed registration if consumers recognize the generic or descriptive meanings of the foreign terms.²

The doctrine of foreign equivalents was used in several cases in the United States. To illustrate, the registration of the Spanish word “GASA” for toilet paper was denied for being descriptive, because the English translation (“gauze”) merely describes the product as a thin, slight, and transparent fabric. ³ The registration of the Hungarian word “HA-LUSH-KA” or “GALUSKA” for egg noodles was denied for being generic, because the word simply translates to “noodles” in English. ⁴ The Korean word “KUK SOOL,” which translates to “national martial arts” in English, was denied protection from trademark infringement, because the word is generic. ⁵

The Philippine Supreme Court has applied the doctrine of foreign equivalents in the Philippine setting, although the doctrine is not found in Republic Act No. 8293 (Intellectual Property Code of the Philippines). It ruled that the Latin word “LYCEUM,” which translates to “university” in English, is a generic mark; hence, it is not subject to trademark protection. ⁶ On the other hand, while the Japanese word “SAKURA” may seem generic at first glance since its English translation refers to a “Japanese flowering cherry,” the Philippine Supreme Court ruled that the term may be considered an arbitrary mark, and thus registrable, in reference to DVD and VCD players, because these items are not associated with cherry blossoms. ⁷

However, dictionary definitions are only indirect evidence of how the consuming public perceives or understands words, and they are not determinative or conclusive of such. Other examples of indirect evidence are listings, newspaper articles, and other publications. In contrast, purchaser testimonies and consumer surveys are direct, and more preferred, evidence of public perception.

Moreover, there are exceptions to the applicability of the doctrine of foreign equivalents, that is, there are occasions when foreign terms will not be translated to their English or dictionary definitions for purposes of registration.

First, the doctrine will not be applied if the ordinary consumer will not likely “stop and translate the foreign word,” because it already signifies a different meaning based on public perception. For example, since a substantial number of American consumers were unlikely to know that the French word “VEUVE” translates to “widow” in English, they were unlikely to stop and translate “VEUVE ROYALE” into English. Therefore, the registration of “VEUVE ROYALE,” which refers to “royal widow” in English, was allowed for sparkling wine products over the objection of the registered owner of the trademark “THE WIDOW” also for wine products. ⁸ Notably, the general consuming public, not merely purchasers familiar with the foreign language, is considered in determining public perception of the distinctiveness of a mark. ⁹

Second, the doctrine will not be applied if the foreign language is dead or highly obscure. Whether a language is dead or highly obscure depends on each case. For example, while Latin is generally considered a dead language, it may not be considered as such if the term in question is still used by the relevant purchasing public. The same holds true for terms from uncommon or obscure languages. ¹⁰

Third, the doctrine will not be applied if the foreign word has developed an alternate meaning in the relevant marketplace different from the English translated meaning, and that alternate meaning would be understood by the relevant purchasing public. ¹¹For example, the registration of the French term “CORDON BLEU” for edible shelled nuts was denied, because the popular French cooking school that owned the pre-existing mark “LE CORDON BLEU” showed that the literal English translation of “CORDON BLEU” (“blue ribbon”) did not have the same significance to the American public that created a different commercial impression from its mark. ¹²

Fourth, the doctrine will not be applied if it is unlikely for purchasers to translate the mark because of “marketplace circumstances or the commercial setting in which the mark is used.” ¹³ In In re Pan Tex Hotel Corp., ¹⁴ the Spanish-based mark “LA POSADA,” which translates in English to “the inn,” was used with the words “motor hotel” appearing directly under the mark “LA POSADA” in advertising brochures and on a sign mounted in front of the motor hotel. Thus, the foreign mark would not likely be translated by American consumers, because the brochures and sign themselves clearly indicated that the establishment was a “motor hotel,“ not a typical inn.

The Philippine Supreme Court did not apply the doctrine of foreign equivalents in the case of “GINEBRA,” because almost the entire consuming public (90%) will not stop and translate the Spanish term (“GINEBRA”) into its English equivalent in the dictionary (“gin”) given that such consuming public immediately associates the term with the gin product of a specific gin manufacturer. Moreover, Spanish is no longer commonly used in the Philippines, and there was no evidence showing that the consuming public identifies “GINEBRA” as a Spanish word for “gin.”

In sum, to increase the likelihood of registration of a mark and thus enhance its protection, one should not use a foreign term from a common modern language in place of a descriptive or generic mark, and one should not use a foreign term that has developed an alternate meaning (or has been associated with another product manufacturer or service provider) in the relevant marketplace. On the other hand, one can use a foreign term from a common modern language in an arbitrary or suggestive manner. Moreover, one can use a foreign term, albeit descriptive or generic, if it is unlikely known by a substantial number of consumers, or if it comes from a dead, uncommon, or highly obscure language, and the foreign term itself is not used by the relevant purchasing public. Furthermore, one’s advertising materials can readily indicate that the ordinary meaning of the English translation of the foreign term is inapplicable or is not being used; therefore, the foreign term is arbitrary or suggestive (not descriptive or generic).

If you want to read more on fanciful, arbitrary, suggestive, descriptive, and generic marks, please see this article: “The Spectrum of Distinctiveness for Mark Protection: A Guide to Choosing the Right Trademark or Service Mark in the Philippines.”

Please Note:
This article was prepared for informational purposes only. It is not a legal advice. And while it strives to be accurate and relevant, there is no guarantee that it will remain so in the future or when it is received. For legal advice on Philippine intellectual property (IP) law, please consult a licensed Philippine attorney.

We Can Help You:
Zamora and Poblador provides legal services on Philippine IP law, including registration, opposition, cancellation, enforcement, prosecution, defense, contract preparation, contract review, due diligence, and portfolio management.

Zamora and Poblador is a member of the Intellectual Property Association of the Philippines, the Asian Patent Attorneys Association, and the International Association for the Protection of Intellectual Property.

You may make inquiries or schedule an appointment via landline at +(63)(2)88125767 to 70, mobile at +639175085389, or email at zp@zplaw.com.ph.