On-line Design applications

Following last week's announcement from WIPO on their improved on-line filing facility for Hague International Design applications, this week I will look at the on-line filing abilities of some other Offices.

OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.

Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.

OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.

Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.

Further afield, Canada and Australia offer on-line tools for which they should be commended.

It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.

In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..

New on-line filing tool for Hague Design applications

WIPO have announced the introduction for a new on-line filing system for Hague International Design applications.

It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.

WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.

With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.

Word perfect.... a tour of some of the world's roughest language terrain

It's only easy if you know the answer, as Chris Tarrant has been known to say on Who Wants To Be A Millionaire?, and it is surprising to me how many people do not know the answer to the question of what differentiates a translation and a transliteration - or that so many find themselves tongue-tied when asked to explain it.

The answer in short: a translation is what something means in another language, while a transliteration is how something sounds. I find the easiest way to explain is to translate and transliterate into English.

Take the word shown here: Коледа

This is Bulgarian Cyrillic (the EU's third alphabet). The word translates to (has the meaning) "Christmas", and it transliterates to (or is written) "Koleda".

While my Bulgarian pronunciation is far from perfect, if I muttered it on the streets of Sofia or Varna, I hope that I would be understood (particularly if I were there in December).

In the field of trade marks, however, translations are not always possible. For example, the compound word STARBUCKS doesn't mean anything. Meanwhile, those of you with foreign language skills will know that transliteration can be a complicated business. If, in a stuffy Munich conference room, you uttered the phrase, "Ich bin heiss", which taken word-by-word would mean "I am hot", this would be met by raucous laughter or awkward gasps of astonishment by your German peers. I'll omit explanation of the German meaning of the phrase here (the introduction of the .xxx sponsored top-level domain may provide ITMA Review with enough adult comment to comment on), but no doubt many of you will understand the potential for confusion and embarrassment.

Getting back to Mr Tarrant, a translatable trade mark I worked on many years ago was for the Millionaire show. Its translation into Spanish was cruel on this native English speaker, who was left more tongue tied than before: ¿Quién quiere ser millonario?

And other factors influenced the brand. In Hungary, a million Forints is less than £3,000 so being a millionaire in Budapest was probably within reach for the majority.  If I recall, the first Russian name of the show translated back as the fairly non-PC, "Lucky Man".

So it is clear that cultural differences and sensitivities become more prominent when dealing with translation and transliterations. (There can be difficulty with the product too. In the Russian version, "asking the audience" was not always a benefit. It is reported that audience members often deliberately gave a wrong answer. But I digress.)

The tyre company Continental apparently found the going tough when it entered the Taiwanese market. While the term "the Continent" for Brits means the whole of Europe from the other side of the English Channel onwards, "continental" in Mandarin can refer to Mainland China, which could evoke less-than-positive feelings in would-be customers in Taiwan.

No rules

We all have our horror stories and tales of success in the registration of translations and transliterations. It's important to realise there are no set rules that govern them. Translations often throw up dilemmas - how many words do the Sami people have for snow? (It’s a myth that the Inuit have many.) Meanwhile, transliterations can create different quandaries.

Cyrillic and Greek have clear letters and established equivalents in the Latin alphabet. The same can be said of the elegant-looking alphabets of Armenia and Georgia. But be careful. Think of "s" and "z" being almost identical in English, whereas the difference could be more marked in your transliteration language. Does the brand need the power of a harsh letter, or is a softer pronunciation going to serve the brand's message better?

Take particular care with Cyrillic. This issue is notable in Ukraine, since the Ukrainian and Russian languages use slightly different Cyrillic alphabets. With the exception of the autonomous Crimea, Russian is not an official language of Ukraine. However, nearly a third of the Ukrainian population speak Russian as their mother tongue, so it can be important to register both Ukrainian Cyrillic and Russian Cyrillic trade marks if they are indeed different and if the budget allows.

Be clear, also, in how your mark should be said in the first place. The sports brand Nike often rhymes with bike in British English, whereas Mikey wears Nike in the US. I am sure the American version would generally prevail, but would the British version be better suited in countries with closer links to the UK, for example, as Hindi or Urdu equivalents for India and Pakistan?

Chinese represents a difficult language group and Chinese branding consultants find themselves in a lucrative business. The complexity of the Chinese language means transliterations are translatable back into English. Let's take COCA-COLA. The transliteration adopted would be pronounced along the lines of "ke kou ke le". This can be translated into English as "tasty and enjoyable".

Display difficulties

Displaying your translated/transliterated trade mark can present additional challenges. You may wish to maintain consistent branding across the world, so ensuring your trade mark in various scripts is proportionate will be an important task for a design team, especially when a translated or transliterated mark is longer or shorter than the Latin trade mark.

In Iraq, trade mark applications for Latin script marks must be accompanied by an Arabic transliteration. You can take this as a benefit: you get your regular trade mark and an Arabic transliteration for the price of one. Iraqi agents are accustomed at devising the Arabic equivalent, which must be bigger, and sticking it on the application papers. However, be proactive if you can and see if there is already an Arabic version devised, because what the agent comes up with might not be the same.

Iraq is the only country in which transliterations are currently compulsory. And, with its own sub-classification system and 15-year registration terms, it is one of the quirkier trade mark jurisdictions around. If you come across some older Registration Certificates from Qatar, you may notice that transliterations were mandatory there too, although this situation has now changed.

In the People's Republic of China, the applicant's name must be transliterated in Chinese on the trade mark application, so be careful when filing for house marks and ensure there's consistency between them. Russia has strict advertising laws regarding elements appearing that are not in Cyrillic, which can place greater onus on Cyrillic equivalents. Take particular care with slogans and names that are likely to appear on shop signs and seek local advice.

It's clear that you or your client should contact local partners or a branding agency to ensure they get the right translations/transliterations. Can you register defensively in the meantime? For Chinese, in particular, this is difficult because of the diverse nature of the languages. Those with specific alphabets (Cyrillic, Greek, Armenian, Georgian) are easier. However, in many of these countries Latin marks will be cited against local scripts and vice-versa (although I'd make sure there was a watch in place in case an Examiner has an off-day).

To close, a final word on the use of the Madrid Protocol. It's most relevant for the filings of Cyrillic translations/transliterations in the former Soviet republics, as Madrid is far more cost-effective than national applications. However, you would need to file a base application at the UK IPO. Many companies in western Europe take this route and file at their national IPO, so the risks could be considered negligible, but would the Cyrillic mark be treated as a stylised mark by the IPO? If so, the Madrid Protocol registration should be regarded as stylised.

Furthermore, unless you are exporting direct packaged goods from the UK, there is potential that no use of the Cyrillic mark will be made, and it will be vulnerable to cancellation. To be fair, provided the Madrid filing follows hot on the heels of the UK filing, you will get through the five-year "central attack" period. However, would there have been a bona fide intention to use the mark in the UK in the first place?

These concerns are removed when you base your mark on a CTM as Cyrillic is an official alphabet. Clearly it will also have some worth if your Cyrillic translation/transliteration will be used in Bulgaria or other parts of the EC.

Sadly, there is no easy-to-follow strategy when it comes to this subject, but I hope this piece will have least lit the way, and will have left you a little less lost in translation (or transliteration).

This article originally appeared in Issue 392 March/April 2012 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.