Navigating the Legal and Business Aspects of Regional Language Trademarks
This article delves into the legal framework of registering a trademark in a regional language, highlighting the benefits along with the challenges that may arise. It also explores landmark cases and provides insights into overcoming challenges, allowing brand owners to make informed decisions while protecting their brand identity.
Tags/keywords: Regional language trademarks, Trademark Registration, Transliteration, Deceptive Similarity, Business Protection, Intellectual Property
Introduction
It is quite well known and accepted that India is a land of great linguistic diversity, with 22 major languages of India being recognized by the Constitution of India under the “Eighth Schedule” and over 19,500 languages or dialects spoken in India as mother tongues, which signifies that there is a lot to gain in terms of the benefits that business owners can accrue by entering into the local markets and by getting regional trademarks; it is like the brand is acknowledging and accepting the cultures of different regions in India. It also symbolizes a sense of inclusiveness, unity and acceptance. However, at the same time, there are challenges when trying to get trademarks registered in regional languages.
Legal Framework for Registering Trademarks in Regional Languages in India
Trademark Rules and Requirements
As per Rule 28 of the Trade Marks rules, 2017, where a trade mark contains words or numbers in scripts other than Hindi or English, then the applicant must provide in the application, a precise transliteration and translation of each such word or number in English or in Hindi and has to state the language to which the words or numbers belong.
It is necessary to provide the translations and transliterations to identify whether the same word has already been registered in any other language.
The trade mark act, 1999, allows for the registration and protection of trademarks, such as those in regional languages. As per Section 9 of the Trade mark Act, 1999, the trade mark must be distinctive enough to be registered and should not be too generic, descriptive or commonly used in the industry.
S.9(1)(c) says that trade marks consisting exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered, unless the trade mark has acquired distinctiveness character as a result of the use made of it or if it is a well-known mark.
Additionally, it should not conflict with any other trade mark which is also registered and furthermore regional language trade marks are subject to the same opposition process as trademarks in English whereby third parties can oppose the application if it infringes their rights/ registered trade mark or causes confusion.
Benefits of Registering a Trade mark in Regional Language and Opportunities for Businesses
· Enhances cultural relevance: A business getting a brand registered in the regional language where their target market exists holds a lot of cultural significance – as language plays a very important role in dictating consumer behavior and choices.
· Strengthens brand recognition and loyalty: If people find a brand with a name that is in the language they speak, they may be more gravitated towards that brand, which will help businesses gain more recognition and foster loyalty.
· Expands market reach: It helps brands connect to audiences from diverse backgrounds and reach expanding rural markets.
· Promotes inclusivity and accessibility: India is a diverse nation, and registering in regional languages makes it accessible to the non-English speaking populace.
· Strengthens competitive edge and builds stronger local connections: It helps businesses differentiate themselves from other brands or competitors, gain an edge over them, reach local communities, and build connections.
Challenges
One of the biggest impediments that arise when trying to register a trade mark in a regional language is when two businesses who are engaged and providing similar or identical goods or services have trademarks that are translations of the same word in different languages, which can cause confusion among consumers in the future, lead to trademark conflicts and hinder registration for one of the businesses.
Then, arises the challenge of phonetic similarity between trademarks. For example, a regional brand in Hindi might sound similar to a well-established brand name in another language. This can ultimately result in trademark disputes because of the likelihood of confusion. Therefore, it is advised that businesses should carefully check for phonetic similarities and potential conflicts during trademark searches.
Another issue that arises is that in India, there are many scripts and dialects, which makes the test of distinctiveness more difficult. For instance, Hindi and Marathi share scripts yet differ in pronunciation and meaning.
When transliterating a trademark in the regional language into English, it could result in variations and disparities from the original, that could affect the registration and brand consistency.
There could be competition from the existing and established local brands who may oppose new registrations, due to similarities arising in the meaning, sound, or appearance.
One possible solution to this is Section 11(4) of the Trade Marks Act, 1999 which provides that a trademark can still be registered despite similarity with an existing mark if the proprietor of the earlier trademark consents to the registration. In such cases, the Registrar may allow the mark to be registered under special circumstances as provided in Section 12. Section 12 further allows for the registration of identical or similar trademarks by different proprietors in cases of honest concurrent use or other special circumstances that justify such registration. This provision is designed to accommodate situations where multiple businesses may have been using similar marks independently and honestly, allowing both to coexist legally under certain conditions set by the Registrar.
But while these provisions may offer a legal route to resolve conflicts, in practice, obtaining consent from established trademark owners is often difficult, as they may be unwilling to permit new entrants who could dilute their brand or cause consumer confusion. Additionally, proving honest concurrent use can be procedurally demanding and expensive, which may deter small or new businesses from pursuing this option. Therefore, while Sections 11(4) and 12 provide flexibility, their practical utility is limited unless supported by proactive negotiation or strong legal backing.
When trying to get a regional language trademark registered and enforced, it requires navigating diverse regional laws, judicial systems, and linguistic interpretations, which can often lead to delays in enforcement.
It could be that small and medium enterprises (SMEs) in regional markets are not aware of the importance of trademark protection, which can leave them vulnerable to infringement.
Landmark Case Laws
When it comes to the issue of deceptive similarity between marks in different languages that convey the same idea, Indian courts have provided their opinions, for example in the case of J.C. Eno Limited v. Vishnu Chemical Co. (1940) 42 BOMLR 924 The plaintiff’s product was being sold in the market as “fruit salt” and had gained quite a bit of popularity and reputation amongst the customers. Meanwhile, the defendant, also began selling their product under the name “Falaxar”, which is a blend of words taken from the Marathi langauge, with “fal” meaning fruit and “kshar” meaning salt.
When the plaintiff brought forth an action against the defendants, it was held by the courts that the plaintiff has acquired the right to the exclusive use of the words “Fruit Salt” in relation to their product and that those words were a distinctive mark, thus no one has a right to use those words in any language in connection with similar goods since that is likely to cause confusion and deception in the minds of consumers.
Then in the case of T.G. Balaji Chettiar v. Hindustan Lever Ltd, AIR 1967 Mad 148 T.G. Balaji Chettiar was a manufacturer and seller of soap and had filed a trade mark application with the word “Surian” and the device of the sun. However, Hindustan Lever Ltd (“HLL”) who held trade mark registration in the words “Sun” and “ Sunlight”, along with a device of the sun, opposed the registration; HLL argued that the Tamil word “Surian” which T.G. Balaji sought to get registered was just a translation of the word sun, and would therefore be likely to cause deception and confusion since the trade mark “Sunlight” and “Sun” have been in use by HUL for almost six decades.
The judge presiding over the matter accepted that there was similarity and a close resemblance between the marks of the rival parties when it came to distinguishing and salient features of marks and that it could result in deception and confusion.
Thus, it was ruled that the trademark “Surian” was infact deceptively similar to the trade marks of HLL.
In the cases that came forth after, for instance in the case of Bhatia Plastics v Peacock Industries Ltd, AIR 1995 Delhi 144, the trademark “Peacock” of the defendants was said to hold deceptive similarity to an already registered trademark, “MAYUR” of the plaintiff’s even though “MAYUR” was a Sanskrit word and was not being commonly used amongst the people.
Likewise, in the case of Surya Roshni Limited vs Electronic Sound Components Co., AIR 1995 DELHI 92 the court found that the defendant’s trademark “Bhaskar”, (meaning the sun), along with a sun device was deceptively similar to the plaintiff’s trademark “SURYA”. Thus, the court ruled in favor of the plaintiff.
In the recent case 2017 case of Gillette Company LLC vs Tigaksha Metallics Private Ltd. & Ors. CS(COMM)153/2017 the plaintiffs Gillette company LLC had initiated a suit against the defendants, Tigaksha Metallics pvt. Ltd. and was seeking a permanent injunction against them restraining them from infringing on Gillette’s the trade mark “Wilkinson’s Sword” by using the trade mark “Zorrik Talvar”.
It was held by the Delhi High court in this case that people were more likely to associate the word TALVAR (Hindi word for Sword) with SWORD and that even though the word Zorrik was distinct from Wilkinson, it would not eliminate the risk of association of the word Talvar with SWORD, and was therefore likely to cause confusion and deception in the minds of the consumers despite the facts that both the marks were phonetically and structurally dissimilar.
Conclusion
Getting a trademark registered in the regional language offers a lot of opportunities for businesses as it fosters inclusivity and strengthens the connection of the brand with the local consumers. However, in order to mitigate the challenges and issues, it is important for businesses to conduct comprehensive searches in multiple languages to identify potential conflicts and to provide precise translations of the mark in a recognized language like English or Hindi. It is also advised for small businesses who might not be aware of how to go about the entire process to seek legal consultation and advice from IP lawyers who are familiar with trademarks laws so as to navigate potential issues effectively.
However, it is important to note that such protective measures often carry significant costs that small business owners may find prohibitive if they do not clearly understand the tangible benefits. The expense of comprehensive searches and legal consultations may seem counterproductive to entrepreneurs operating with limited resources.
To address this challenge and encourage more trademark registrations in regional languages, it is necessary to create widespread awareness among target groups about both the benefits and the process involved.
References:
1. The Nation and Its Languages, Deccan Herald (last visited on April 17, 2025), https://www.deccanherald.com/opinion/the-nation-and-its-languages-3251161
2. International Mother Language Day: Vanishing Voices & the Fight to Keep India’s Mother Tongues Alive, The Hindu (last visited on Mar. 18, 2025), https://www.thehindu.com/children/international-mother-language-day-vanishing-voices-the-fight-to-keep-indias-mother-tongues-alive/article69241829.ece.
3. Concepts & Definitions, Office of the Registrar General & Census Commissioner, India, Ministry of Home Affairs, Government of India, (last visited on April. 19, 2025) https://language.census.gov.in/infographics/data/showConceptsDefinitions.
4. Ministry of Education, Indian Languages (last visited on April. 20, 2025), https://www.education.gov.in/sites/upload_files/mhrd/files/upload_document/languagebr.pdf.
5.Can You Trademark Translations?, Mondaq (last visited on April. 21, 2025), https://www.mondaq.com/india/trademark/1209346/can-you-trademark-translations .
6. Regional Language Trademarks in India: Navigating the Nuances, Soni’s Vision (last visited April 22, 2025), https://www.sonisvision.in/blogs/regional-language-trademarks-in-india-navigating-the-nuances.
7. J.C. Eno Limited v. Vishnu Chemical Co. [(1940) 42 BOMLR 924]
8. T.G. Balaji Chettiar v. Hindustan Lever Ltd. [AIR 1967 Mad 148]
9. Bhatia Plastics v. Peacock Industries Ltd. [AIR 1995 Delhi 144]
10. Surya Roshni Limited v. Electronic Sound Components Co. [AIR 1995 DELHI 92]
11. Gillette Company LLC v. Tigaksha Metallics Private Ltd. & Ors. [CS(COMM) 153/2017]
12.Section 9 of the Trade Marks Act, 1999
13.Section 11 of the Trade Marks Act, 1999
14. Section 12 of the Trade Marks Act, 1999
15. Rule 28 of the Trade Mark Rules, 2017
Authored by: Ms. Aditi Singh
She is a fifth-year B.A. LL.B. (Hons.) student at NUALS. She has a keen interest in Intellectual Property Rights, Technology, Media and Telecommunication (TMT) Law, Data Protection and Privacy Law, and the intersection of law and technology.
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