Eight Nights and Two Dozen Spellings

CH, H, KH, or does it matter?

Puzzled as to how to wish your Jewish friends and colleagues a happy holiday this season? You’re not alone. The Oxford English Dictionary identifies 25 different spellings for the name of the upcoming 8-day festival of lights celebrated by Jewish people around the world, even more if you count French – each with varying numbers of C’s, H’s, and K’s (my personal preference is “Channukah”. Last year’s UnscrIPted post used “Hanukkah”).

What if this word were a trademark? Would these variant forms matter?

Key to a trademark’s protection is its signifying power. Use of a mark in a form other than as registered risks rendering it vulnerable to cancellation for non-use. Variations may be tolerated, but only to the extent the same dominant features are maintained and the differences are so unimportant as to not mislead an unaware purchaser. As between parties, use of similarly spelled or pronounced marks risks creating consumer confusion, and may be considered “use” of a mark that could give rise to a depreciation of goodwill claim. 

Part of the confusion around how to spell the holiday’s name is that it’s not an English word (It’s Hebrew meaning “dedication” – here, of the Temple in Jerusalem), and English is notoriously tricky when it comes to phonetics (a game of “Go Ghoti” anyone?).

But phonetics matter when considering trademarks.

A mark can be clearly descriptive, and thus unregistrable, when sounded. Confusion can arise depending on how marks are pronounced. In one notable circumstance, the Trademarks Opposition Board found confusion likely between the trademarks STARBUCKS and SINZIBUCK in part because while “different when considered in the English form in which they appear, [they] may be perceived as being more similar in some ways to those familiar with Cantonese and/or Mandarin” (Starbucks Corporation v David Silverthorne, 2018 TMOB 53 at para 47). Even the Supreme Court has recognized that it is no defence in a depreciation of goodwill claim to say that the defendant’s mark was differently spelled: “If the casual observer would recognize the mark used by the respondents as the mark of the appellant (as would be the case if Kleenex were spelled Klenex), the use of a misspelled [mark] would suffice [to establish the “use” element in a depreciation of goodwill claim]” (Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23 at para 48).

So, whether your greeting reads “Happy Channuka”, or “Hannoukah”, or “Khanukkah” (or even “Chag Samayach”), as long as the differences are so unimportant as to not mislead the recipient, it should be well received.