THE DOCTRINE OF FOREIGN EQUIVALENTS AND THE DOCTRINE OF PROSECUTION HISTORY ESTOPPELS - A PRAGMATIC
An impalpable asset always holds a higher importance than a monetary asset. From numerous other Intellectual Property Rights asset, trademarks clasp an advanced significance in the Indian market. Trademark is an imperative asset to an entity as it helps customers to recognise and differentiate one brand from another. Therefore, entities often focus on using unique and catchy marks and try to get them registered to hold back others from using the same. However, as per the trademark law, only a mark which is not descriptive of the goods and services associated with it and which is not similar to an existing mark, to avoid confusion, can be registered.
The Doctrine of Equivalents Since descriptive marks are not recognised, establishments either small, MSME or large, often convert the mark which would be descriptive in the native language of one country to some other language and get it registered. To avoid this, the courts in India have started using the Doctrine of Foreign Equivalents (hereinafter used as doctrine).
1. Doctrine used in U.S. Regime
The said doctrine is majorly used in the U.S. Under this doctrine, the mark in foreign
language is converted in English and post that a test applies to distinguish regardless
if the mark is descriptive or not, if found descriptive, the registration is refused. Whereas, contrary to this other aspects would also be taken care such as: are the
buyers would be able to translate the mark into their native language? Whether people
would get aware of the foreign language in the future? Therefore, if a mark has a
specific meaning in a foreign language but not in English, then this doctrine will not
apply. This doctrine is not a strict rule but is a mere guideline.
In the case of Palm Bay Imports, Inc v. Veuve Clicquot Ponsardin Maison Fondee EN
17721 , the dispute was regarding the mark between both the parties. The Board
initially held that Palm Bay’s mark “VEUVE ROYALE” which is in French was similar to defendant’s mark “THE WIDOW”. The Doctrine of Foreign Equivalent was applied, and the board also pointed out that most consumers in US know French and they will be able to translate the French mark into English.
The court of appeal stated that “Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness,
descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks. When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied”. The court agreed with the decision of the board.
In the case of Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd.., the plaintiff’s
mark was “Bel Aria” (French) and defendant’s mark was “Bel Air” (Italian), both of
which translated into “beautiful air” in English.The board refused to apply the
doctrine here as it alleged that it was highly unlikely that people would translate two
different languages in English and then compare.
2. Doctrine used in India Regime
Upon a period of time and revolution in using the mark to get registered under
Trademark by the inventor, applying the said doctrine has made India to borrowed the
doctrine from the U.S. Indian courts have used this doctrine in many cases. It is not
strictly followed in India although is applied when required. This doctrine is
especially of importance in India as not only the marks in foreign languages must be
tested for descriptiveness but also the marks in local languages. Currently there are 22
languages that are recognised by the Constitution and various other languages and
scriptures. Rule 28 of the Trademark Rule, 2015 also specifies that the applicant has
to provide for transliteration and translation of the marks that arein language other
than Hindi or English. The applicant has to specify the language in which the mark is
written as well.
The presence of the said doctrine can be seen through various case laws in India as
well, wherein in the case of Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of
Gujarat the dispute was regarding the mark “VOLVO”. The defendant raised a
contention that the word Volvo means “to roll”, “rolling up”, “roll into” in Latin and
plaintiff’s products were used for rolling, and hence the mark was descriptive.
However, the court stated that the doctrine of foreign equivalents would not be
applicable in this situation. The court held that the doctrine does not intend to
translate every language in English; rather the test is whether the buyers are aware
enough to translate the foreign language. It stated that since Latin is an obscure and
forgotten language, it is unlikely that the buyers would understand the word; therefore
it was held that the mark “VOLVO” was not descriptive.
The court also stated that “A rigid, unthinking application of the ‘doctrine of foreign
equivalents’ can result in a finding quite out of phase with the reality of customer
perception. The ‘doctrine should be viewed merely as guideline and applied only
when it is likely that the ordinary purchaser would stop and translate the word into its
English equivalent. Thus, use of a term such as ‘LA POSADA motor hotel’ would not
be generic or descriptive even though ‘la posada’ is roughly equivalent to the English
word ‘the inn’. If the foreign word is very similar to English equivalent such as OPTIQUE for eyeglass, AROMATIQUE for toilet water or SELECTA for beer, it would be descriptive under the rationale of the misspelling rule. In the case of Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar Refineries Pvt. Ltd., the dispute was regarding plaintiff’s mark “RISO LITE”. The defendant claimed that the mark was descriptive as rice is called “RISO” in Italian. However, the court refused to apply the doctrine of foreign equivalents and stated that in India it is highly unlikely that the buyers would know Italian and those they would translate plaintiff’s mark in English. Therefore, the mark “RISO LITE” was not held to be descriptive.
The Doctrine of Prosecution History Estoppel – Paradigm in Trademark Law
The Doctrine of Prosecution History Estoppel (hereinafter called as doctrine) arises as a legal defense to an assertion of infringement under the doctrine of equivalents. Prosecution history estoppel only arises when there is no unembellished infringement. Though, the usage of the said doctrine is to a great extent under Patent objections whereas upon time it holds the incidence under Trademark law as well.
The said doctrine also holds relevance similar to Section 115 of the Indian Evidence Act,
1872. Section 115 of the Evidence Act states that when a person intentionally makes another person believe, by way of declaration, act or omission, that something is true and to act on such belief, then that person cannot deny the truth of that thing in a proceeding between him and that other person. For example: A intentionally leads B to believe that the car belongs to A and pursues B to buy that car from him on that belief. Later A cannot file a suit against B claiming that the sale of car to B was invalid.
The Doctrine of Prosecution History estoppel is also pedestal on the identical concept
incorporated under Section 115 of the Indian Evidence Act. It states that if a right has been surrendered during a prior prosecution then it cannot be claimed in a new prosecution. The Keller Williams v. Dingle Buildcon (see here) recently decided by the Delhi High Court and the decision was partly based on the doctrine of Prosecution History Estoppel.
The facts of the case are such:
i. That the plaintiffs filed a suit for injunction against the defendants to restrain them
from using the mark “KW”.
ii. The plaintiff contended that they are in the real estate business since 1983,
incorporated under the laws of Texas, have a global presence and that they have
been carrying out their business worldwide under the famous mark “KW”. Their
trademark was also registered in India in 2012 on proposed to use basis.
iii. The plaintiff claimed that the defendants by using the mark “KW” were passing of
their goods and services as plaintiffs good and services. The plaintiff claimed that
the defendants were cashing on plaintiff’s reputation and goodwill in the Indian
iv. On contrary the defendants contended that they do not use “KW” alone, they use
it with other words like “KW Srishti”, “KW Delhi 6” etc which makes their marks
different from that of the plaintiff’s mark. They also pointed out that their marks
were registered in 2011 on a claim of user basis, while plaintiff’s mark was
registered in 2012 on a proposed to be use basis. They further submitted that
services provided by the plaintiff and the defendants are different in nature.
Plaintiff is involved in real estate whereas, defendants are involved in insurance,
financial affairs, monetary affairs, real estate affairs, building constructions,
repair, installation services including builders and developers, land developments,
property development, construction and civil interior, repairs and civil works.
v. While hearing the arguments of both the sides, the court realised that when the
plaintiff had applied for trademark registration, the trademark registry in the
examination report pointed out the pending applications of the defendants. The
plaintiff submitted an explanation to the registry stating that their mark and the
mark in the pending application were used for different goods and services and
hence was differentiable.
vi. The court pointed out that in a previous prosecution before the trademark registry,
the plaintiff did not convey any objection against the application filed by the
defendant. The court stated as follows:
“(C) The business of real estate brokerage is very different and distinct from the
business of development and construction of real estate. The plaintiff does not
claim to be in business of or having reputation and goodwill in the construction
and development of real estate. Rather the plaintiff does not even claim to be
carrying on business of real estate brokerage. The plaintiff describes itself as a
real estate franchisor. The plaintiff itself on 20th May, 2013 while responding to
the objections in the examination report of the Trade Mark Registry to the
application of the plaintiff for registration of the mark, took a stand that the
business of advertising, business management, business administration and offices
functions for which the defendant no.1 had applied for registration of the same
mark prior to the plaintiff was very distinct and different from the business of
franchising/offering technical assistance in the establishment and/or operation of
real estate brokerage for which the plaintiff had applied for registration. The
defendants even today are not pleaded to be in the business of franchising or
providing technical assistance for real estate brokerage. The position thus
remains the same as on 20th May, 2013. When the plaintiff then had not objection
to defendants also using the “KW‟ marks, there is no reason, why today. From
the response dated 20th May, 2013 aforesaid of the plaintiff, it is clear that the
plaintiff had no objection to use by the defendants or by others of the same mark
as the plaintiff i.e. KW, as long as for businesses other than the business for which
the plaintiff intended to use the said mark. The plaintiff cannot be entitled to
restrain the defendants without establishing by evidence how today there is a
possibility of confusion CS(COMM) 74/2019 Page 18 of 20 and deception by the
defendants, in the business of real estate development and construction, using the
KW formative marks registered in favour of the plaintiff, as part of their
device/logo mark. Without the plaintiff establishing the tort, of the defendants, by
confusing the customers, passing off the properties developed by the defendants as
those from the plaintiff, cannot be entitled to any relief on the ground of passing
The Delhi High Court while passing the final order and that too in the favour of the
defendants and against the plaintiff had rightly applied the Doctrine of Prosecution History Estoppel. The Court held that when the plaintiff was given an opportunity, they failed to submit an objection and they themselves stated that they the marks used by the defendants were different from the mark used by the plaintiff and that since both the entities were involved in different business, no scope of confusion would arise. The court believed that since the plaintiff, previously had expressed no concerns before the trademark authority, they had not right to express a concern now. Therefore, the request for an injunction against the defendants was refused by the High Court of Delhi. The Hon’ble High Court had rightly taken a prospect that once a stand taken during a prosecution, one cannot go against it in a new prosecution.
Based on the above discussion, it can be concluded that the Doctrine of Equivalents is not a universal or obligatory rule but a preventative measure. The said doctrine would be applied by the examiner while examining the objections during a trademark registration and the same varies from case to case. The said doctrine requires translation of that foreign language which the consumers are aware of. Therefore, it is safe to say that the knowledge of the consumer plays an important role while applying the said doctrine. Moreover, said doctrine is important for the Indian Trademark law as we not only have to be careful regarding foreign languages but also to Indian languages as India is a home to more than 700 languages. The doctrine of prosecution history estoppel is of utmost importance as it restraints people from claiming a right that they had waived of in a previous prosecution. Further the said doctrine dictates that the objections must be interpreted in the light of their rejections and amendments. This stops people from taking undue advantage. The court does not allow
reclaiming ones right that had been waived off and does not allow changing the stand which had been taken in a previous prosecution. At last, be aware of the applicable laws while dealing with the objections/prosecution during the trademark registration and don’t take another stand while coming before the court of law.