According to WIPO there has been a marked increase in worldwide trademark applications over the last 20 years. Milka Sculac Sennett from Trade Marks Directory Service (TMDS), part of the CPA Group, explains the language issues trademark watchers encounter when reviewing official trademark journals from all over the world.

A trademark is a company’s fingerprint. It is a unique and exclusive asset that requires preservation and protection if it is to fulfill its true potential. And trademark watching – a service that systematically detects any obvious conflicting trademark applications in official IP journals throughout the world – has become an indispensable weapon in the war against potential infringements. This specialist industry has now become a vital part of trademark protection strategies, due to developments in the trademark world and growing awareness of its usefulness.

Economic and political changes are just some of the reasons for increases in trademark applications across the world. China, for example, has seen a huge swell of applications due to economic development. New country divisions have also boosted the figures, as countries, such as the former Soviet Union, have restructured into independent countries with their own IP journals and languages.

Watching for infringement
Taking these things into account, it is now even harder to detect potentially conflicting trademark applications, in all the foreign languages and scripts existing in the trademark world. And to keep up with the steady stream of new trademarks, businesses need to employ a professional watching service to receive and deal with the 13,000 official country trademark journals that arrive each year.

Of these 13,000 trademark journals, only around 25% are actually published in English. The others arrive in many diverse foreign languages and scripts, which require a proficient knowledge of them, as well as an insight into the cultural and historic background of each country. From a variety of European languages (Dutch, German, Portuguese, Icelandic, Macedonian, Greek, Turkish and so on) to Asian languages (Arabic, Japanese, Korean, Chinese, Thai), reviewing trademark journals requires the kind of thorough and personal language knowledge that a computer-generated watching service just can’t match.

Interpreting the mark
There are three different ways of evaluating the meaning of a foreign word or symbol, all of which must be carried out in a thorough trademark watch: translation, transliteration and phonetic rendering. Translation is the act of converting the meaning of a foreign word or symbol into a corresponding English word or term. For example, one Ukrainian trademark in the Cyrillic script can be literally translated into English as ‘black velvet’. Transliteration, on the other hand, refers to the conversion of the letters in one alphabet into the corresponding letters of another alphabet. That same Ukrainian trademark would therefore be transliterated, letter for letter, as ‘Chornii Oksamit’. In this case, where the transliteration has no meaning, it can be seen that the trademark’s translation is more valuable to a client than its transliteration. But this isn’t always the case. Industries, in particular the pharmaceutical industry, keep a careful eye on the transliteration of international trademarks, which although they may not spell out a word of particular meaning in another language, may still resemble the spellings of product names.

But that’s not all. It’s not as simple as just translating or transliterating the words. You also need proficient knowledge of the similarities between foreign languages and scripts. The Ukrainian language, for example, may be a major European language, but it can be confused with the Russian language, which although related is not identical. That same meaning (‘black velvet’) would be expressed as ‘chornyi barkhat’ in Russian. It is our job as language specialists to appreciate that important difference.

Rather than simply translate or transliterate, we also need to examine the pronunciation of foreign words and characters, to evaluate what the mark as a whole intends to represent. This is known as phonetic rendering. For example, we would translate each individual character in the Chinese mark ‘Lan meng’, word for word, as ‘blue dream’, but would look at the phonetics of another Chinese mark, pronounced ‘Ka fu ka’, for its more important conversion into the name Kafka, the Czech-German author whose works have been translated into Chinese.

Interpreting the meaning of a word or symbol in a country’s official language is only one part of an accurate trademark watch. It is also important to take into account the secondary languages, scripts and dialects that can co-exist alongside the official language.

Cross-language watching
Interpreting the meaning of a word or symbol in a country’s official language is only one part of an accurate trademark watch. It is also important to take into account the secondary languages, scripts and dialects that can co-exist alongside the official language, and that requires additional cross-language knowledge. The Spanish trademark journal, for example, may include additional marks in the Catalan, Galician and Basque languages, which all need to be checked. The Indian journal gives trademark watchers and translators a particular challenge, as there are 18 official languages (Assamese, Bengali, Gujarati, Hindi, Kannada, Kashmiri, Konkani, Malayalam, Manipuri, Marathi, Nepali, Oriya, Punjabi, Sanskrit, Sindhi, Tamil, Telugu and Urdu) in India (and many other local ones), almost all with their own individual script. All may occur (some often, like Hindi) in the denomination of the trademarks and need to be transliterated.

In addition, words in one language do not only appear in trademark journals of the countries where that language is the official language, but also in journals throughout the world. Where words appear not to be in the obvious national language of the journal, specialists make an effort to determine their origin. A pertinent example is found in the Chinese script. Its characters can be found throughout the world, particularly in Southeast Asian countries such as Japan. It is important that we are able to identify them and review their meaning even if they are not published in the official Chinese trademark journal.

But this also applies to other languages and scripts. A Thai journal recently featured a Japanese word (‘Fuji’, the name of the famous mountain) and both Thai and Japanese language specialists were involved in reviewing this mark. In another example, a mark consisting of the word ‘yumyum’ in Thai script appeared in a Japanese journal. In the description of the mark, however, it was described as ‘einein’ in Roman script (due possibly to the resemblance of the Thai script to the Roman letters) and did not mention ‘yumyum’ at all. TMDS language specialists checked the mark as ‘yumyum’ (as well as ‘einein’) and found an exact match for ‘yumyum’.

Specialist knowledge
As all these examples show, interpreting the meaning of a foreign word or symbol isn’t as simple as typing it into a computer and pressing ‘translate’. To comprehensively watch your trademarks for infringement, you need to bring in a trademark watching supplier with a bank of knowledgeable and skilful linguists who can not only translate, transliterate and establish phonetic rendering in their specialised areas, but also identify words and expressions in a variety of other scripts and languages.

With a proficient knowledge of all official languages and scripts in IP jurisdictions worldwide and with a wide-ranging knowledge of regional ones, TMDS, part of the CPA Group, has been delivering the best in trademark watching for over 60 years. At present, we are reviewing over 11,000 newly filed trademark applications and sending over 2,000 reports on potentially conflicting trademarks per day.

For more information about our trademark watching service, visit www.tmds.com

This article first appeared in IP Review, issue 10

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