Some of you may have noticed that Disney’s new heroine is called Vaiana in most parts of Europe and Moana almost everywhere else. Novagraaf’s Anca Draganescu-Pinawin explains the disparity.
While it is not unusual for a film title to change from one geographic region to another, whether for linguistic or cultural (or marketing) reasons, it is rarer to see the name of its heroine also change so radically; in particular, when the character’s name is also the title of the film.
The reasons behind the change of name are not completely clear, but a tweet from Disney España gives an important clue: ‘Moana’ is registered as a trademark in Spain, and in a number of other European countries, hence the change to Vaiana in Europe. According to the INDAC blog, one of the creators of the cartoon, John Musker, also confirmed this information at the last Annecy Film Festival. ‘Moana’ is not legally available for use in most European countries and, given that ‘Vai’ means ‘water’ and ‘Moana’ means ‘ocean’, the sense is ultimately the same.
Of course, there may be additional reasons behind Disney's decision, but – as a general rule – changing a character’s (and film’s) name in this way, has significant financial implications, and requires additional investment in communication to avoid confusion in the marketplace.
The importance of trademark searching
It takes time, resources and money to create distinctive and effective company, brand and trade names. But, how can you be sure that the mark you've selected hasn't been registered or isn't being used by another party already? Trademark searching provides a quick and simple means to investigate the availability of a chosen brand and trade name in sectors and countries of business.
In this internet age where ‘free’ information is at everyone's fingertips 24/7, it may be tempting to use an online search engine, such as Google, to conclude whether a trademark already ‘exists’. However, such an online search will not identify those marks that have already been registered, but not yet launched into a marketplace – or at least not yet in such a way that it comes up highly ranked in an online search. Only a detailed trademark search in official or purpose-built databases will be able to identify such potential conflicts.
Search engines are useful tools for searching to see if a trademark that is the same or similar to a chosen mark is already in use and, if so, where and for what products or activities, but it cannot help brand owners to really detect all potential obstacles and, therefore, such searches give, at best, a false sense of security.
Trademark searching provides a quick and simple means to check the availability of a chosen mark before embarking on a potentially costly brand launch. A number of different trademark searches can be applied, depending on a company’s needs or market, but will typically fall into one of the following categories:
- Identical trademark search: identifies marks or devices that are visually or phonetically identical;
- Similar trademark search: identifies identical and confusingly similar marks;
- Trademark search with opinion: includes an attorney's recommendation on the results of the identical or similar trademark search based on their consideration of the prior marks identified;
- Index search: identifies companies with identical/similar names to the search terms;
- In-use verification search: examines whether a third party with prior rights is using its trademark rights correctly, which may provide grounds to challenge a registration.
In addition, a trademark search can also examine a chosen mark for unintended meanings or associations (a linguistic search). This is of particular importance should a company be launching its product or brand in certain overseas countries where you could be caught out by linguistic differences.
Searching by class
It’s also important to note that trademarks are not only compared on the basis of the signs but also on the basis of the products and/or services they cover. Thus, two similar signs for radically different products and/or services can coexist peacefully, except in cases where one of the signs has reached a high reputation, as is the case for Coca-Cola, for example.
In other words, a trademark search does not consist simply in putting two signs side by side and making sure they do not look alike. It is an IP strategy exercise that requires not only specific legal knowledge, but also a broader operational vision.
Sometimes it will be worth taking the measured risk to continue with the mark; at other times, the option of contacting the prior right holder to reach an agreement will be recommended and will often resolve the situation. Sometimes, however, the only solution will be to drop the desired mark and to opt for a new name. It is perhaps for this reason that Disney heroine is also ‘Moana’ in Russia and Kazakhstan (Моана), ‘Vaiana’ in Ukraine (Ваяна), ‘Vajana’ in Serbia and Lithuania, and ‘Oceania’ in Italy.
Anca Draganescu-Pinawin is IP Counsel at Novagraaf in Switzerland