Trademarks in translation & transliteration

[dn-101]

Trademarks in translation & transliteration

Say, there is a TM in UK or US. Let it be Shmei Drei and those are generic words.
Can I have a transliterated or translated Shmei Drei TM'd in China, Japan or Russia?

One example would be YP, Yellow Pages, White Pages, etc.

 

[jberryhill]

http://thettablog.blogspot.com/2008/02/precedential-no-6-ttab-clarifies.html

The extent of the "doctrine of foreign equivalents" under the trademark laws of other countries is likely the subject of a survey paper somewhere, but that's the name of the subject about which you are looking for answers.

In the US, if a mark includes a non-Enlish word, a translation statement is required, and will look like this in the record:

Word Mark EL JIMADOR
Translations "EL JIMADOR" is a Spanish term used in a region in Mexico to identify a worker who harvests the agave plant.
Goods and Services IC 032. US 045 046 048. G & S: NON-ALCOHOLIC BEVERAGES, NAMELY, DRINKS PRODUCED WITH FRUIT AND VEGETABLE JUICES AND SPICES; NON-ALCOHOLIC COCKTAIL MIXES
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78814637
Filing Date February 14, 2006
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition July 15, 2008
Owner (APPLICANT) BROWN-FORMAN CORPORATION CORPORATION DELAWARE 850 DIXIE HIGHWAY LOUISVILLE KENTUCKY 40210
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record David S. Gooder
Prior Registrations 2198430
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[dn-101]

Mucha Gracias!
It's an interesting example. But of course we know of "Cuban" trademarks originating out of Europe and Mexico, and all those almost-Russian sounding vodkas are in the gray area.

 

[Theo]

I think I asked a similar question a while back but there was no response as far as I can remember.

What are the tm implications of marks that are descriptive words being translated into their foreign language equivalents? For example what if a Greek company uses the brand "Milo" and the shape of an apple for their computer services - "milo" means apple in Greek.

 

[dn-101]

I believe "Milo" was discussed in My Fat Greek Wedding ad nauseum.

 

[Theo]

No, that was "portokali". Wrong fruit

 

[dn-101]

My little daughter made me watch it at least 10 times.
I remember the old man saying: Apples & Oranges. In the end we're all Fruits.
:smilewinkgrin: