Choosing a name for your brand is important. There are many considerations that must be given to the name – does someone else trade under the name, is it distinctive or is it easily recognisable/remembered. However, one further consideration is whether the mark would be seen as vulgar or offensive whether it be in the chosen language or any other language.

In the UK a trade mark can be refused on the basis that it is “contrary to public policy or to accepted principles of morality”. Everyone will be aware of French Connection and their adoption of the FCUK brand:

In 2005 someone attempted to invalidate their FCUK trade mark for jewellery and watches on the basis that it was registered contrary to the UK law. However, this action was dismissed and the mark is registered for a variety of goods and services.

Brands are often global and a trade mark which will be fine in one country could have an entirely different meaning in another. This brings us to the recent announcement that Indian sportswear company Elisir Lifestyle PVT. Limited is planning on expanding outside of India.

In India the mark SPUNK has no vulgar connotations. However, in the UK, although the Oxford Dictionary uses the meaning of “courageous and plucky”, this meaning has been eclipsed by its slang meaning which would be considered vulgar.

Therefore even if a brand is well known and accepted for registration in one territory it may sometimes be difficult expanding into other territories if the meaning is very different. Another example is the US clothing company IMPACT REDUCTION APPAREL (IRA) may not have considered the different meaning their brand would have in Ireland:

Outside of the fashion industry, Apple’s Siri sounds like Shiri in Japanese which apparently means “bottom” and Lumia (as in Nokia Lumia) means prostitute in Spanish. Therefore sometimes it may be better to change the name in these countries or ensure that proper checks are conducted before the adoption of a brand.

However, it is not always bad news (as with FCUK) as some brands are accepted notwithstanding the challenges and controversy it faces.

Therefore, if you are considering adopting a new brand we recommend that we conduct searches and obtain advice from overseas lawyers in relation to the territories of interest as to whether the mark is safe to use.

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