FREQUENTLY ASKED QUESTIONS Do Trademarks Protect Their Foreign Equivalents

Can my trademark in English prevent registration of a similar trademark in a different language?

THINKING OF TRADEMARKING YOU BRAND?

TRANSCRIPT

For example, you file a trademark in one language would it help you prevent somebody else from registering your trademark in a different language that means the same thing?

First of all, it varies from country to country, but the general rule is this. They would only look at the languages that a significant number of people in that country speak to say, ok, enough people would understand that this translated version is the same thing or very similar to that other previously registered trademark.

So for Canada, it's easy because we have two official languages, French and English. Anything you file in English will automatically cover French versions. Sometimes it's a nightmare in terms of trademarks searches because you have to look at synonyms, not just in one language but in two.

For the U.S., you usually need to look at Spanish versions. Even though Spanish is not the official language, it is pretty common for the Trademarks Office to give some weight to Spanish translations.

So when the Trademarks Office looks at whether two trademarks are confusingly similar, they look not just at the words themselves, not just how they look like, not just what they sound like, but also what they mean. And if the meaning is identical, sometimes they will give weight to the meaning in different languages. But if that name, or the word, or the phrase, is from a completely obscure language that only very few people in the country speak or understand, usually won't be enough for you to say, well, we have the trademark in English, now it also covers all sorts of translations of that name or that phrase into completely different languages.

So, if you are using localized versions or if you are using a version of your brand in a different language, be sure to trademark in that language itself. Don't just assume that your English or your French trademark would automatically protect the other versions of that name.

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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.