ASEAN focus: don’t be lost in translation

05-10-2017

ASEAN focus: don’t be lost in translation

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Companies in the ASEAN region should consider registering their trademarks in official local languages in order to protect their brands, advises Kiran Dharsan Seiter of Seiter IP Consultants.

More than 600 million people live in the ten Southeast Asian countries forming ASEAN but no more than 20% of consumers across ASEAN understand English. Brand owners with strong business interests in Southeast Asia often wonder whether they should protect their brands in local languages within targeted markets, with one key factor being cost.

It is better to be safe than sorry because once a trademark is “localised” and hijacked by a local trader, the costs to recoup what has been “lost in translation” could be higher than protecting the trademark in the local language in the first place.

Case study

Assume instructions are received to file a hypothetical word mark ‘Rose’ in class 25 for the goods “clothing, headwear, footwear”. The applicant did not conduct a pre-filing search, does not intend to file the mark in the local language and there exists a similar prior mark registered in the local language. How will this mark be treated at the examination stage in the following five countries?

Singapore

Assume an examiner finds a prior registered mark in Chinese characters, say ‘천밧’ (transliteration: ‘Méiguī’), which means ‘Rose’, in class 25 for “denim jeans”. The basis of raising a citation would lie on whether the overall effect of the similarities in the marks and the specification of goods will mislead consumers into believing the proprietor of ‘Rose’ is economically related to the proprietor of ‘천밧’.

In this instance, ‘천밧’/‘Méiguī’ is arguably visually and phonetically different from ‘Rose’, but because the two marks have the same meaning and the goods are similar, the examiner is likely to cite
‘천밧’ against ‘Rose’. 

Malaysia

Assume an examiner finds a prior registered mark in Malay, say “Bunga Mawar”, which means ‘Rose’, in class 25 for “denim jeans”. The basis for raising a citation is the same as in Singapore. In this instance, “Bunga Mawar” is arguably visually and phonetically different from ‘Rose’, but because it has the same meaning and the goods are similar, the examiner is likely to cite “Bunga Mawar” against ‘Rose’.

Indonesia

Assume an examiner finds a prior registered mark in Bahasa Indonesia which means ‘Rose’, in class 25 for “denim jeans”. If the meaning or translation is provided and the marks have similar meaning in Bahasa Indonesia, then the likelihood of an examiner rejecting the trademark ‘Rose’ is very high.

Thailand

If the examiner discovers that there exists a prior mark in class 25 registered in the Thai language which is a transliteration of ‘Rose’, ie, it has the same phonetics, then that prior mark would certainly be cited against the mark ‘Rose’.

If on the other hand the examiner finds a prior mark in class 25 registered in Thai which is merely a translation of ‘Rose’, ie, has the same meaning, then that prior mark would probably not be cited against the mark ‘Rose’. This is because, in Thailand, the visual and phonetic similarity of marks matters more than the conceptual similarity.

Vietnam

If the examiner finds that that there is a prior mark registered in class 25 in Vietnamese which has a similar meaning and/or phonetics to the mark ‘Rose’, then the examiner is likely refuse registration of ‘Rose’ in class 25. In Vietnam, conceptual similarity is as important as visual and phonetic similarity of the marks.

Given these examination practices, if budget permits, brand owners are recommended to perform a more holistic search by broadening the scope to include trademarks in official local languages and seriously consider protecting their trademarks in selected local languages. Doing so can prevent local traders who aim to usurp the goodwill and reputation of a recognised international brand from registering or making infringing use of similar “localised” trademarks.

The right course of action is a balancing act, weighing the overall costs of searching and filing multiple trademarks against the risks of not searching or registering a mark in local language. A brand owner envisaging entry into the Southeast Asian market may be wise to strike the balance in favour of a front-end investment in search and filing costs as insurance against far costlier remedial legal actions later.

A brand owner that can stretch its budget stands the best chance of avoiding its brand being lost in translation at the hands of opportunistic local traders.

Kiran Dharsan Seiter is the managing partner of Seiter IP Consultants, an IP boutique firm based in Singapore. She is admitted to practise in Singapore as an advocate and solicitor, and has extensive experience in managing trademark and design portfolios in all Asia-Pacific jurisdictions. She can be contacted at: kiran@ipconsultants.asia

Kiran Dharsan Seiter, Seiter IP Consultants, ASEAN, trademark, trademark registration, translation, Vietnam, Singapore,

WIPR