Language, Translation and Trademarks

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Do you immediately think about David Beckham when you hear the words “Golden Balls?” The term recently appeared in the news because of supposedly infringing a registered trademark. But not the one you might think…

According to Gaelyn Scott, head of ENSafrica’s intellectual property department, a major part of trademark law is about avoiding confusion. If the use or registration of a trademark is possibly confusing for consumer, all operations are called to a halt.

In an article on Business Report she writes that the problems that can occur in trademark law have recently been illustrated by a European decision.

On the European continent, a French company holds the Community Trade Mark (an EU-wide registration that is often abbreviated as CTM) registration for “Ballon d’Or,” or “ball of gold.” This is the name of an award that is annually presented to the best footballer in the world.

However, Scott says, this company recently filed a law suit against the English Bodur family, who use the term Golden Balls as a trademark for their products.

The patriarch of the Bodur family is called Gus, making his initials GB. According to the family, this was their reason for using the name “Golden Balls.” Moreover, Golden Balls is also a pet name Victoria Beckham uses for her soccer-playing husband David, but the Bodurs claim the Beckhams are perfectly fine with them using the term.

The French company holding the “Ballon d’Or” trademark, on the other hand, is not. In fact, it has asked for the cancellation of the Golden Balls CTM registration as they feel it is too close to “Ballon d’Or.”

According to Scott, the trademark law is OK with businesses using more or less the same name if the products are different, but as both the Ballon d’Or and the Golden Balls deal with paper goods, this was not the case.

In cases like this, Scott says, the visual, phonetic and conceptual similarities must be examined to find out whether confusion can arise. However, she believes that even when two trademarks are different in terms of concept, confusion can still arise. In the case of the Golden Balls, the court decided against the cancellation. Even though it agreed that conceptual similarity can be a reason to draw back a trademark registration, the court believed this similarity should be very clear, which was not the case here.

Scott is a South African herself and stresses that meaning and translation are very important notions in her country. However, she says issues on the subject do not occur as often as people think. She refers to a case in the Western Cape where the trademarks “Lovane” and “Chameleon” (“Ulovane” in the Xhosa language) were deemed different by the court. Their reasoning? The two trademarks were used for wine, and not that many people that speak Xhosa drink wine. Thus, the Xhosa term is probably not used often enough to create confusion.

The decision made in the Golden Balls case implies that trademarks will usually not be violated by translation, Scott says. However, she does believe that companies in the multi-lingual South Africa should keep possible translations in the back of their minds when deciding on trademarks.

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