It shouldn’t come as a surprise to any of us that Canadians are multilingual, especially to anyone who has lived in any of the metropolitan cities such as Vancouver or Toronto. According to the last Statistics Canada census, in 2021, 41.2% of people in Canada can conduct a conversation in more than one language and one in eight Canadians spoke predominantly a non-official (English or French) language at home. In areas with large immigrant communities, businesses often have not only an English name but also a name in the language of the communities they do business in. Some examples are T&T Supermarkets and Aberdeen Centre, which both include their Chinese business names in their logo. Words in foreign languages can be registered as a trademark, but require the submission of a translation and transliteration. Also interesting to note that descriptive words in foreign languages can be registered!
As an example T&T has registered the trademark for their Chinese name in addition to their English, and has provided the transliteration as “DA TUNG HUA” and translation as “BIG UNITED CHINA”.
I was curious how trademarks in languages other than English or French would be viewed by the Trademark Board and the courts. From my research, I found an interesting case: Saint Honore Cake Shop Ltd. v. Cheung’s Bakery Products Ltd.
In 2006, Saint Honore Cake Shop, a large chain of Chinese bakery founded in Hong Kong in 1972 with existing stores across China and Hong Kong, applied to file the following Chinese characters designs as follows:
Cheung’s Bakery Products Ltd., which operates a chain bakery business in the Greater Vancouver Area under the Anna’s Cake House branding, filed a statement of opposition on the basis that the above mark would result in confusion with their registered trademarks, seen below:
Specifically, the opponent (Anna’s Cake House) argued that the Chinese characters in Saint Honore Cake Shop’s logo are the same as the Chinese characters in the Anna’s Cake House logo, both are pronounced the same, and would be recognized as Anna’s Cake House by a person who understands and reads Chinese characters.
The Canada Trademarks Opposition Board held that the opponent had provided evidence supporting that a substantial number of Canadians could speak and understand the Chinese language dialects and that their customer base was the Chinese community. It also held that the applicant (Saint Honore Cake Shop) failed to show that there was no reasonable likelihood of confusion between the parties’ marks. Therefore, Saint Honore Cake Shop’s application for the trademark was denied. Saint Honore Cake Shop appealed to the Federal Court and subsequently the Federal Court of Appeal, but lost the appeal in both.
What I found interesting about the cases was the expert evidence and affidavits put forth by both parties regarding the nature of the Chinese language as well as facts related to Chinese language fluency amongst Chinese-Canadians. Understandably, without an understanding of the language in question, it would be very difficult for an English-speaking judge or board to determine whether marks could cause confusion.
According to the expert evidence, the Chinese characters in the Anna’s Cake House logo would be pronounced as “an na bing wu” in Mandarin, and “on no bing uk” in Cantonese. The Chinese characters for Saint Honore Cake Shop would be pronounced as “sheng an na bing wu” in Mandarin and “sing on no bing uk” in Cantonese. The “sheng” or “sing” character is translated to “Saint”. “Bing wu” or “bin guk” which can be found in both, translates to “cake house/shop” or more broadly, “bakery”.
While the above is just one example of non-official language trademarks in Canada, I wonder how things would play out if a business does not use a foreign-language trademark in Canada, but is known for it elsewhere. For example, McDonalds is known in China as “mai dang lao” (in Mandarin Chinese) and as a personal anecdote, most, if not all, people I would speak to in Mandarin would refer to McDonalds as “mai dang lao” if we are conversing in Mandarin. However, McDonald’s Canada does not use this name. Do you think if someone started a business here and called themselves “Mai dang lao” and sold fries and burgers, McDonald’s Canada would want to say something about it? (think Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd!) What if the business did not use Chinese characters at all, only the English romanization? In the Saint Honore Cake Shop case, a lot of evidence was presented as to whether the potential customers of Saint Honore Cake Shop and Anna’s Cake House could read Chinese, taking into consideration the large Chinese population in Vancouver. If the new burger restaurant “Mai dang lao” was not targeted towards a Chinese demographic specifically, they could argue that the average customer is non-Chinese speaking and therefore would not be confused.
Communications Law