What to consider when registering a trademark in a foreign language

According to an article by the Law Society Gazette, the EU General Court has just denied Caffè Nero’s appeal for a trademark outside the UK. This rejection is final as the chain’s application for the figurative trademark ‘Caffè Nero’ was already dismissed by the EU Intellectual Property Office in 2014. The EUIPO’s First Board of Appeal had deemed the mark, which covered classes 30 (teas, coffees, biscuits and confectionery) and 35 (coffee shops and retail stores) as deceiving consumers. It claimed the two words “Caffè” and “Nero”, that are commonly used in Italian, would be understood as meaning ‘black coffee’ “It is a matter of common knowledge that in many member states the literal translation into their own language of the expression caffè nero will be understood by the general public as referring to coffee served as a beverage without any additions”. Caffè Nero disputed this by contending that in the Italian coffee culture, coffee is referred to using a specific name like cappuccino, caffè latte or macchiato, and not by referring to its colour.

The ruling is ironic seeing as the UK-headquartered company already possesses two European trademarks, a word mark and a figurative mark, containing the elements ‘caffè nero’. Indeed, Caffè Nero called out the Board of Appeal for infringing principles of equal treatment. The ruling will, however, hardly deter the chain’s expansion into Europe which is already full swing. Caffè Nero currently has coffee shops in Ireland, Poland and Cyprus.

This case raises the interesting question of foreign language considerations for trademark applicants. In the EU, where many languages are spoken and understood, applying for a trademark that means something in a different language can run into several problems.

The first one, which applies to the Caffè Nero case, is that words can mean something in a foreign language which will confuse those consumers who understand the language. As Roba Hamam notes, a trademark with meaning in a foreign language can be accepted as long as the language is one that is hardly spoken in the country where the trademark application is made. For example, a water bottle company could register a trademark for "vesi", which is Finnish for water, in class 32 (mineral water) in England. It could not, however, register a trademark for "water" neither in England nor in other member states because enough people in the EU understand English and it could create confusion among consumers. Indeed, it would fail to meet the distinguishing function of art. 3.1c) of the EU Trademark Directive because the term “water is a generic descriptive term for the product in question.

Prêt-a-manger, another British company with a trademark in a foreign language, does not face this problem because its word mark is an expression that, although widely understood in English as a twist on “pret-a-porter” or ready to wear, does not suggest a different product or erroneously mislead the consumer.

The second problem one could encounter in registering a trademark in a foreign language is that of infringing upon a trademark filed in a different language with the same pronunciation or meaning.

According to the EUIPO guidelines for opposition, confusion can arise when the pronunciation of two word marks of different languages are similar. This can occur because the two sound similar either when they are pronounced correctly or when they are pronounced by foreigners according to the phonetic rules of their own language. Examples of this include the Postex vs. Postecs, and Kämpgen vs. Campers cases.

Foreign words can also confuse consumers with regards to their meaning. A public with limited knowledge of a foreign language is unable to distinguish between subtleties such as Sunrise and Sunset, Secret Pleasures and Private Pleasures. On the other hand, a public with some knowledge of a foreign language might engage in automatic translation of the mark and confuse it with a mark meaning the same thing in their own language. Such was the case in the oppositions of Cinco Oceanos vs. 5 Oceans, Ballon d’Or vs. Golden Balls and Shark vs. Hai.

The best way to protect your company’s reputation, brand value and profits in today’s global marketplace is by registering a trademark and gaining trademark enforcement rights. However, just having the trademark is not enough. When creating a brand, you must do your research and thoroughly consider all potential cases of language confusion and trademark infringement. This is especially true of companies with global ambition. As the Court noted in this case, ‘The essential function of a trademark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.’

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website,