Canadian Lawyer InHouse

April/May 2020

Legal news and trends for Canadian in-house counsel and c-suite executives

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8 www.canadianlawyermag.com/inhouse QUEBEC Don't get lost in translation Trademarks may have unintended meanings in other markets — with damaging results, write Jean-François De Rico and Pascal Archambault IN 2018, Audi launched a new, all-electric SUV under the brand "e-tron." It has a nice ring to it, but less so in Quebec and other French-speaking parts of the world, where it sounds nearly the same as the word "étron," meaning "turd." You may also have heard of Hunt-Wesson Foods marketing its line of "Big John" prod- ucts in Quebec as "Gros Jos," which is French- Canadian slang for "big boobs." There are other famous examples in trademark lore in Canada and abroad. Unfortunate cross-linguistic and cross- cultural transpositions are just one of the risks. Failure to consider the literal meaning and implicit connotation of translations, their phonetic or conceptual similarity with a word in another linguistic group or region or their resemblance with a trademark used or registered elsewhere can hurt a brand and jeopardize its protection in a target market. This is to say nothing of the pitfalls of trans- literation into different alphabets or writing systems: The Chinese characters initially used by Coca-Cola to produce the closest corresponding phonetic equivalent for its brand could be read as "bite the wax tad- pole" and "female horse stuffed with wax," depending on the dialect. Coke fixed this promptly. In Canada, the equal constitutional status of French and English, as well as the nation- wide application of the Trademarks Act, make the perception of consumers speaking either or both languages particularly relevant. If there is a reasonable likelihood of confusion among any of these groups, a mark cannot be registered. Indeed, the test for confu- sion under Canadian law considers not only the first impression of the average English- or French-speaking consumer but also that of bilingual consumers when circumstances warrant it. This is even more important be- cause confusion, within the meaning of the act, may result from the use of a trademark in only one area of Canada. Trademark owners in Canada should, therefore, pay attention to the potential for confusion between trademarks or trade names in either or both official languages. After all, there are millions of bilingual Cana- dians who may associate words in one official language with their equivalent in the other, which is more than enough to give rise to the possibility that a trademark that does not create any confusion in a Francophone or in an Anglophone might create confusion in a bilingual person through the use of distinct words in French and in English. For example, in Produits Freddy Inc., the word "noix- elle" might mean nothing to an English-speaking person, and the word "nutella" might be meaningless to a French- speaking person, but it was not excluded that the use of either of these words would con- fuse a bilingual person who knew the meaning in both languages. As the foregoing exemplifies, the likelihood of confusion across cultures and languages based on conceptual similarity will be higher for trademarks made up of or derived from common words. The upshot of all this is that Canadian busi- nesses should, at a minimum, consider both official languages when picking a trademark for their products and services. They should consider obtaining an availability opinion from a trademark professional, not only for the actual mark but its potential translations, too. Aside from the legal availability of a trademark in foreign jurisdictions, careful thought should be given to how the brand will be perceived by buyers with different cultural references and sensitivities. For a business to use a brand interna- tionally — if for no other reason than to sell products online — the most relevant markets should be identified to assess whether the trademark will convey the right image and message to customers there. You will also want to steer clear of online translation tools for something so important, and instead consult professional translators or native speakers. Slang and idioms can be a challenge, and you want to avoid having to ask buyers to pardon your French. Jean-François De Rico and Pascal Archambault practise information technology law and intellectual property law, including trademarks, at the offices of Langlois lawyers. "Aside from the legal availability of a trademark in foreign jurisdictions, careful thought should be given to how the brand will be perceived by buyers with different cultural references and sensitivites."

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