Appeal Board allows registration of mark consisting of Swedish words based on internet searches
The Appeal Board of the Patent Office has upheld an appeal against the refusal to register the trademark SVENSKA HANDELSBANKEN (International Registration No 1107500), filed by the Swedish company Svenska Handelsbanken АВ (publ), in respect of services in Classes 35, 36 and 45.
The official refusal initially issued by the Patent Office explained that the claimed designation SVENSKA HANDELSBANKEN, when translated from Swedish, means 'Swedish Commercial Bank'. The examiner, who himself did not know the Swedish language, found a reference on the Internet using Google translate. Based on his findings, the examiner concluded that the word elements making up the mark were lexical units pointing to the place of operation of the applicant and its field of activities. Hence, those words were descriptive in relation to the claimed services in Classes 35, 36, 45.
The Appeal Board of the Patent Office did not uphold the opinion of the examiner and decided to register the trademark. While considering the appeal, the board again conducted an internet search, and found that the word combination 'Svenska Handelsbanken' had no clear translation. The search engine Yandex did not provide a translation for 'Svenska Handelsbanken', while Google translate provided a translation for the word 'Svenska' (Swedish), but not for the word element 'Handelsbanken'. It must be noted that neither the examiner nor the members of the Appeal Board were familiar with the Swedish language; however they believed that they could make a judgment by relying only on information found on the Internet. The Appeal Board noted that the Swedish language is not known to the majority of Russian people and that the average Russian consumer may believe that the word elements in question had been artificially coined.
The Appeal Board also noted that, according to the translation found in the online professional dictionary Valenta (the dictionary itself does not claim to be “professional”), it could be inferred that the word element 'Handelsbanken' consisted of the Swedish words 'handel' and 'banken', that their combination was not customary in the Swedish language and that it was not a set term. According to the Appeal Board, the word 'handel' may be translated as 'commerce', 'business', 'market', 'deals', 'shops' or 'traffic'. The word 'banken' derives from 'bank' and may be translated as 'sandbank', 'cloudiness', 'bank', 'depository' or 'embankment'.
The Appeal Board stated that the word element 'Handelsbanken' is not used to designate a commercial bank. It also consulted a translator who explained that a non-governmental credit organisation providing financial services for legal and physical persons is called an 'affàrsbank'. The word designation 'Svenska Handelsbanken' did not define a credit organisation in the Swedish language and could not be descriptive in relation to the claimed services.
Without judging whether the decision of the examiner or of the Appeal Board is correct, one may note that both authorities made their conclusions on the basis of information obtained from the Internet. The Internet is a useful source of information, but such information needs careful verification. The persons searching for information on the Internet should have some competence in the subject at issue, otherwise their findings might be dubious.
Vladimir Biriulin, Gorodissky & Partners, Moscow
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