Translating Trademarks: Towards the Equal Treatment of Foreign- Language Marks

Part A of this dissertation tells the story of The Coca-Cola Companys trademark registrations in Canada in order to illustrate the linguistic issues faced by trademark administrators. A trademarks registrability depends on its distinctiveness, which is its ability to can distinguish its traders goods and services from those of another trader. Knowing how well a trademark will function to distinguish means ascertaining first what has already been registered, which is no easy task when the databases cannot administer foreign-language marks that are not Romanized. Part A proposes the solution of transcribing foreign-language marks that are not Romanized, so they can be filed/searched appropriately in databases.

Part B of this dissertation tells the story of two competing Chinese bakeries in Canada in order to illustrate the linguistic struggles of the judiciary. These struggles are nothing new, as academics have noted that [l]ong before the introduction of the registration system [by what was then England in 1875], owners of marks containing terms in foreign languages or scripts could in certain circumstances prevent their use by trade rivals and that by 1905 English and North American case law has been fruitful of conflicting holdings. What is new in the 21st Century is the increasing frequency of foreign-language marks that are not Romanized, as the added complexity of foreign scripts makes it harder for courts to assess and compare trademarks that they cannot even read or sound out, much less understand. Part B proposes the solution of assuming linguistic knowledge for all foreign-language marks, so they can be assessed and compared appropriately in the case law.