Monopolizing Matratzen in Malaga: The Mistreatment of Distinctiveness of Foreign Terms in EU and US Trademark Law

Abstract

Courts and scholars on both sides of the Atlantic have sometimes concluded that when domestic consumers do not understand the meaning of foreign terms, or are not likely to “stop and translate” them into the domestic language, the terms are not considered generic or descriptive, and thus should be eligible for immediate trademark protection. This article contends that trademark protection for terms that are generic or descriptive in a foreign language can have anticompetitive effects even when domestic consumers do not currently understand them. This is the case when the terms are likely to be needed in the future to name or describe distinct goods, or when there is a reasonable likelihood that foreign producers will incorporate the terms as part of composite marks. Thus, in most instances, foreign words should be analysed for distinctiveness in the context of their own languages, and should be excluded from protection if they are generic, or protected only upon a showing of secondary meaning if they are descriptive. The published version of this paper is available at 2018 Grur Int. 1118.