Generic words in one country, trademarks in the next

When you say “plakkies” in South Africa everyone points at their adidas, Havaianas or locally branded flip-flops. Same thing in Australia when you say “uggs”, better known as boots with a sheep wool lining. No one who relates this directly to the Ugg®brand by Ugg Australia.

Brands like “Plakkies” and “Ugg”, that in South Africa or Australia would never make to registration (everyone should be able to use descriptive names), may be valid foreign brands. The criterion is: how famous is the exotic meaning to the relevant local public? When the public is familiar with the meaning, it is considered descriptive, and therefore non-registrable. If the meaning is not generally known amongst the relevant public, it will considered a valid trademark.

Another example is “Washi”: in Japan the name of a type of paper, in The Netherlands a brand for window coverings made from Japanese paper.

When mentioning “Bavaria” in Germany, the Germans think of the state of Bavaria. In the Netherlands Bavaria is a famous beer brand.

New York Pizza? For the average American this is a special kind of pizza: large, thin and foldable. In The Netherlands: a pizzeria chain.

This has occasionally led to odd lawsuits. Two Spanish companies were able to stop the (European) Community trademark registrations for “HOUSE OF DONUTS” and “MATRATZEN CONCORD” based on their Spanish national trademarks DONUTS and MATRATZEN (German for ‘matrasses’).

The reasoned that, since the common knowledge of the English and German language is poor amongst the Spanish population, “donuts” and “matratzen” are not descriptive to the Spanish public, and therefore valid trademarks. Even though the rest of Europe immediately understands that these are generic words.

Have you got more great examples? Let us know!

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Erwin Hauër

“Hoop is geen strategie.”



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