IP Information & News

Holiday translation fails — tips for brand owners ‘going global’

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

Ever drunk SWEAT, washed your clothes in BARF or eaten PLOPP? These are just three examples of unfortunately translated brand names that, while successful abroad, would understandably struggle to break into the British market.

The purpose of brands (or trade marks) is often described as ‘enabling the consumer who acquired the product or service to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative’. So how can brand owners achieve this in unfamiliar territories when looking to go global?

1. Make sure it translates

Given the global nature of trade, it’s helpful for trade mark attorneys like myself to have a passing interest in language and etymology. On summer holidays, we probably get more joy than most out of translation fails and unintentionally misleading branding — my favourite examples being Japanese sports drink SWEAT, Iranian detergent BARF and Swedish sweet brand PLOPP. Whether we buy these brands by mistake or for the fun of it, we’re unlikely to make a repeat purchase… More importantly for the brand owner, going global might mean considering an expensive rebranding exercise.

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Part of our role as attorneys involves advising people about any brands they’re considering adopting. As well as ensuring that a trade mark isn’t directly descriptive, we also steer clients away from making faux-pas like the ones above. Owners must always consider whether a brand name can or will be translated into other languages. This could be a direct translation (like CUP to COPA), translation to a different script (Cyrillic, Greek, Pinyin, Arabic, etc.) or transliteration (where a word from the alphabet of one language is transferred to another, easing pronunciation while maintaining meaning). We consult our networks of foreign attorneys around the world on the viability of brand names and, when necessary, use them to find and protect suitable alternatives.

2. Make sure it doesn’t infringe existing rights

I like to play ‘spot the brand name change’ in other countries — WALLS ice cream becomes OLA in the Benelux and South Africa, TK MAXX is TJ MAXX in the USA and DOVE is the name of GALAXY chocolate in the Middle East (not to be confused with the well-known toiletry brand sold in 150 other countries). These changes are usually made as a result of a conflict with an existing brand.

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We all know someone who insists on taking their own tea bags on holiday, and many holidaymakers seek the reassurance of familiar brands. Brand identities serve the purpose of guaranteeing the expected quality of the goods or services, which is why you’ll see Adidos trainers, Dolce & Banana t-shirts, Coasta Coffee, Krispy Fried Chicken and Roy Bans when browsing market stalls abroad. While the bargains might be tempting, depending on the precise nature of the branding, each case might involve infringing trade marks, counterfeit goods or passing-off.

3. Make sure you have strong IP rights to fight off infringers

Some holiday destinations are renowned for knock-off, fake and counterfeit goods. Since these involve using identical trade marks on identical goods, this is clear trade mark infringement — not such an attractive souvenir. Provided that the trade mark owner can identify the source of the goods, success in proceedings is a virtual certainty. Many counterfeit goods are products of criminal enterprise, often with links to money laundering and organised crime — and as such, identifying the infringer isn’t always easy. We work with investigators, customs and trading standards bodies across Europe to tackle this type of crime on behalf of our clients.

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Where the marks aren’t identical, but the goods are and the marks are similar — think PRONGLES crisps, HARRY PITTER WOLRD, HUGO BASS aftershave — while somewhat creative and amusing, it’s still likely to constitute infringement. In these situations, the ‘similar’ marks are compared to the original registered marks visually, aurally and conceptually to see if consumers would be confused. How close the ‘alternative’ names are to the real ones will influence the likelihood of success in infringement proceedings. It’s possible for brand owners to protect more unusual elements of their goods as registered trade marks — and, if these are also copied, there may be additional infringement cases to bring. We can help to identify what should be protected in order to have the strongest portfolio of rights on which to base action.

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When an infringing identical or similar mark is used on goods or services that aren’t identical, a comparison of factors is carried out, including the respective physical nature and composition, uses, users and channels of trade. If, following these tests, the goods or services are considered to be sufficiently similar, infringement proceedings may be successful. The less similar, the more difficult it is to succeed.

While some brands do offer a broad range of goods (HITACHI televisions, dump trucks, washing machines and medical equipment or VIRGIN trains, toiletries, finance and flights), most are primarily associated with one area of goods or services. So finding, for example, Apple body spray, McDonald’s flip-flops or Carlsberg suitcases should probably ring some warning bells that the brand you recognise isn’t really behind the product. Brands that can show they have enhanced ‘distinctive character or repute’ may still be able to extend their registered rights to prevent such infringements — we can advise on the kind of evidence that might be needed to prove the requisite level of distinctiveness.

4. Make sure you can enforce unregistered brand elements

Most of us have picked up a product from supermarket shelves because it looked like the brand we normally buy — only to get it home and discover it’s the supermarket’s own-label version. This is even more likely when you think that the brand name might be different when you’re away from home.

Often, the name of the product is different enough from what has been registered to avoid confusion or trade mark infringement. However, the copying of the packaging or get-up is sufficiently close to dupe us.

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It can be difficult or even impossible to protect an entire font or colour combination. It also might not be financially justifiable to protect slogans or packaging designs with trade marks, given that they’re frequently altered. However, if a brand owner can demonstrate that they have goodwill in elements of their get-up, in the UK they may still be able to prevent competitors ‘passing-off’ their products. To do this, in addition to goodwill, brand owners need to show that the competitor is misrepresenting its connection with the brand owner and that reputational damage has been inflicted to their brand or finances. Outside the UK, similar laws such as dilution and unfair competition are often used to the same effect. We can advise about enforcing unregistered brand elements in the UK and around the world.

We advise clients about what action they can and should reasonably take when their rights are infringed. Pragmatic and strategic approaches are required to maximise the impact of any action and minimise the time and cost involved. We’re equipped to assist in multi-jurisdictional actions and global settlement negotiations.

For tailored advice about your brand and global strategy, get in touch with me at ajc@udl.co.uk.

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