West Case Update

Foreign Words in Trademarks Given Common English Meaning in Usage

Description The seller of "Chupa Chups" sued the seller of "Chupa Gerts" for trademark infringement. The appeals court held that there was no infringement because the key term, chupa, when translated, is a generic Spanish word meaning lollipop or sucker that is due no protection.

Topic International Law

Key Words Trademark; Foreign Equivalents Doctrine

C A S E S U M M A R Y

Facts Guadalajara, Inc., of Mexico, doing business as Dulces Vero USA, sold frozen yogurt cone-shaped lollipops under the name "Chupa Gurts." It was sued for trademark infringement by Chupa Chups, a Spanish company that sells "Chupa Chups," which are ice cream flavored lollipops that contain milk. The district court granted a preliminary injunction barring Dulces Vero from selling its products under the name Chupa Gurts. Dulces Vero appealed.

Decision Reversed. Under the foreign equivalents doctrine, courts translate foreign words used as trademarks into what would be their common English meaning in usage to test them for their generic or descriptive meaning. The word "chupa" is a generic Spanish word for lollipop or sucker, so it is due no protection. Therefore, the issue is whether "Chups" and "Gurts," which are the arbitrary parts of the trademarks, create a likelihood of confusion. They do not since chupa is the key terms in question, so the name Chupa Gurts does not infringe on Chupa Chups by creating a likelihood of confusion.

Citation Enrique Bernat F., S,A, v. Guadalajara, Inc., 210 F.3d 439 (5th Cir., 2000)

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Foreign Words in Trademarks Given Common English Meaning in Usage
Description	The seller of "Chupa Chups" sued the seller of "Chupa Gerts" for trademark infringement. The appeals court held that there was no infringement because the key term, chupa, when translated, is a generic Spanish word meaning lollipop or sucker that is due no protection.
Topic	International Law
Key Words	Trademark; Foreign Equivalents Doctrine
C A S E S U M M A R Y
Facts	Guadalajara, Inc., of Mexico, doing business as Dulces Vero USA, sold frozen yogurt cone-shaped lollipops under the name "Chupa Gurts." It was sued for trademark infringement by Chupa Chups, a Spanish company that sells "Chupa Chups," which are ice cream flavored lollipops that contain milk. The district court granted a preliminary injunction barring Dulces Vero from selling its products under the name Chupa Gurts. Dulces Vero appealed.
Decision	Reversed. Under the foreign equivalents doctrine, courts translate foreign words used as trademarks into what would be their common English meaning in usage to test them for their generic or descriptive meaning. The word "chupa" is a generic Spanish word for lollipop or sucker, so it is due no protection. Therefore, the issue is whether "Chups" and "Gurts," which are the arbitrary parts of the trademarks, create a likelihood of confusion. They do not since chupa is the key terms in question, so the name Chupa Gurts does not infringe on Chupa Chups by creating a likelihood of confusion.
Citation	Enrique Bernat F., S,A, v. Guadalajara, Inc., 210 F.3d 439 (5th Cir., 2000)