A trademark in a national language: is it luxury or necessity?
The export goods and services of the Lithuanian companies is growing with each passing year, as well as the need to protect their trademarks in other markets. However, many entrepreneurs are now wondering whether a registration of one’s trademark transcribed only in Latin characters in another country would be able to protect it. In fact, trademark protection in the countries where non-Latin characters are in use has its own peculiarities. Such states include, first of all, Russia, to which the Lithuanians are exporting the most compared to all the non-EU countries, but also China, Japan, or for example, Israel, the markets which are being recently discovered. So, would a protection of a trademark transcribed in Latin character suffice in the aforesaid countries? Most of the time, it will not. The trademark registration in non-Latin characters has to be applied for as early or even earlier than the standard Latin version.
In most countries there is a requirement to provide a list of goods in the national language, a user often understands and reads only in its native language, therefore, he might be unable to read the trademark transcribed in Latin characters, which means that the trademark will not be able to perform its function. There may be competitors who would be the first to register the transcription of the mark in a local language and then in would be very complicated to prove the similarity of a Latin trademark.
One of the notable stories is the trademark Hermes, which has been registered in China by other persons in local logograms, thereby preventing the true owner from exercising the right to the trademark protection in this area. Even more – a company producing New Balance, was recognized as having infringed the trademark rights of the person who applied for registration of the version of a trademark New Balance in China in the Mandarin language.
Which is the preferable option:
- One of the solutions would be to simply make a transcription of the Latin alphabet sounds in a local language;
- Alternatively, a phonetically similar trademark, with a clear meaning, understandable to a consumer, could be chosen;
- A translation of the Latin trademark that has meaning, into a local language could be made;
- One can also use a different name in a local market.
In any case, it is required to seek for advice from local language experts and marketing people.
In addition to the trademark transcribed in a local language, one should register a Latin trademark as well. A trademark transcribed in a local language would in most cases be registered through the national registration. The characters in the Russian language is an exception – such a mark is comprehensible to residents of many countries and therefore it can be registered using the international registration.