The emergence of Chinese brands has become a global phenomenon. Not only are there exports to and local marketing within the Chinese diaspora and later generations, but Western businesses are also merging with and acquiring Chinese businesses and Western trademarks are engaging in brand extension or cross-branding with Chinese mark owners. In doing so, unexpected language issues are being encountered that create market confusion, cause inefficiencies, and increase costs.
This article proposes as a solution to this conflict among Chinese language marks a model that more realistically assesses the linguistic knowledge of the presumed trademark consumer. Using Canada as a test case, it also develops a method for filing and searching such marks that may suggest similar methods for avoiding conflicts involving foreign language marks in general.
Introduction
Law is a social construct featuring fictional characters. Criminal law applies the standard of the reasonable person to establish criminal negligence.[1] Civil law applies the same standard to establish tort liability for negligence.[2] Intellectual property also has its legal fictions. Patent law imagines a person skilled in the art to assess non-obviousness.[3] Copyright law imagines the author to assess originality.[4] Trademark law imagines the consumer to assess confusion.
The trademark consumer is split into further fictional characters – which is where the social construct starts to fall apart, because the fictional characters are arbitrarily given contradictory personalities. Examples include the sovereign versus the fool;[5] the passive consumer versus the active co-creator of value;[6] and, the illiterate consumer versus the fluent consumer.[7] Although the courts may find fictional characters helpful in explaining and deciding complex issues, courts cannot let imaginations run wild without undermining the credibility of the social construct. To this end, it is important that such fictional characters are developed in a consistent manner.
This article looks at the last aspect of trademark’s fictional character: what I call the illiterate consumer versus the fluent consumer. There is a gap in the literature when it comes to the linguistic knowledge of the trademark consumer. Most articles discussing the mind of the consumer make no mention of linguistic capability, as they focus on how a consumer perceives a mark,[8] differentiates one mark from another mark,[9] or participates in the development of a mark.[10] The articles mentioning linguistics and trademarks do not discuss foreign languages, as they centre on how trademarks communicate meaning,[11] how trademarks identify source,[12] or how trademarks express ideas.[13] The literature usually assumes a common cultural and linguistic knowledge and perspective between the trademark owner and the consumer. This article attempts to fill the gap regarding the linguistic knowledge of the trademark consumer by reviewing Canadian cases involving Chinese language marks in order to develop a workable model for assessing the consumer in cases involving trademarks in a foreign language (i.e., any language that is not one of Canada’s official languages of English or French). It then suggests how this understanding of the consumer can be applied consistently to Canadian trademark cases, trademark purpose, trademark distinctiveness, and the trademarks database.
Part I reviews Canadian trademark cases to develop a test for confusion involving foreign language marks. Part II analyzes trademark purpose to explain how the functions of foreign language marks can now range from restrictive to expansive. Part III analyzes trademark distinctiveness to explain how the meanings of foreign language marks can now range from strong to weak. Part IV reviews the Canadian Trademarks Database to develop a method for filing and searching Chinese language marks, with the hope that it can encourage similar methods for other foreign languages as well.
Featured here is the Introduction section of U. Shen Goh, “Branding Linguistics: Or What Coca-Cola and Chinese Bakeries Have in Common” (2014) 27:1 IPJ 65-116. U. Shen Goh is a Ph.D. Candidate at Osgoode Hall Law School.
[1] R. v. Creighton, [1993] 2 S.C.R. 3, quoting R. v. Hill, [1986] 1 S.C.R. 313.
[2] Vaughan v. Menlove, (1937) 132 E.R. 490 (C.P.).
[3] Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289.
[4] Jane Ginsburg, “The Concept of Authorship in Comparative Copyright Law” (January 10, 2003). Columbia Law School, Pub. Law Research Paper No. 03-51.
[4]Barton Beebe, “Search and Persuasion in Trademark Law” (2004) 103 Mich. L.Rev. 2020, 2025: “The result is that trademark apologists – and plaintiffs – tend to adduce the sovereign when they speak of the basis of protection and the fool when they speak of the scope. Trademark restrictionists – and defendants – do the reverse. They adduce the fool when they speak of the basis, and the sovereign when they speak of the scope. Both camps thus suffer from, at the same time that they seek to exploit, what amounts to a dialectic in trademark theory, in which information and persuasion each contain within themselves the countervailing force of the other.”
[5] Alex Kozinski, “Trademarks Unplugged” (1993) 68 N.Y.U. L.Rev. 960 (“The originator must understand that the mark or symbol or image is no longer entirely its own, and that in some sense it also belongs to all those other minds who have received and integrated it.”); Rochelle Cooper Dreyfuss, “We Are Symbols and Inhibit Symbols, So Should We Be Paying Rent? Deconstructing the Lanham Act and Rights of Publicity” (1996) 20 Colum. J.L. & Arts 123, p. 129 (“At the least, the purveyor and the audience should be considered co-creators of the value. If rights are determined by the existence of value, then purveyors and audience should be treated as joint authors or co-inventors.”)
[6] Cheung Kong (Holdings) Ltd. v. Living Realty Inc. (T.D.), [1999] F.C.J. No. 1966, paras. 53-54: “Counsel for Cheung Kong was able to refer me to no decision holding that, in determining the question of confusion reasonably likely to be caused by a mark comprising foreign words or characters, the Registrar must consider the question from the perspective of an average consumer who understands the language in which the mark is expressed. Indeed, what authorities there are would seem to point in the opposite direction.”
[7] Cheung Kong (Holdings) Ltd. v. Living Realty Inc. (T.D.), [1999] F.C.J. No. 1966, paras. 53-54: “Counsel for Cheung Kong was able to refer me to no decision holding that, in determining the question of confusion reasonably likely to be caused by a mark comprising foreign words or characters, the Registrar must consider the question from the perspective of an average consumer who understands the language in which the mark is expressed. Indeed, what authorities there are would seem to point in the opposite direction.”
[8] Lionel Bently, “From Communication to Thing: Historical Aspects of the Conceptualisation of Trade Marks as Property” in G. Dinwoodie and M. Janis, eds, Trademark Law and Theory: A Handbook of Contemporary Research (Edward Elgar Publishers, 2008).
[9] Beebe, supra note 6.
[10] Deborah Gerhardt, “Consumer Investment in Trademarks” (2010) North Carolina L.Rev., Vol. 88, No. 3.
[11] Graeme Dinwoodie, “What Linguistics Can Do for Trademark Law” in J. Ginsburg, L. Bently, J. Davis, eds, Interdisciplinary Perspectives on Trade Marks (Cambridge University Press, 2007).
[12] Ariel Katz, “Beyond Search Costs: The Linguistic and Trust Functions of Trademarks” (2010) Brigham Young University L.Rev. 1555.
[13] Laura Heymann, “The Grammar of Trademarks” (January, 20 2011). William & Mary Law School Research Paper No. 09-67.