Thinking of getting a trade mark for “Covid” or “CoronaVirus”? Don’t!
While at first glance this may seem like a chance to strike when the iron is hot, registering ‘Covid’ or ‘CoronaVirus’ as a trade mark faces several hurdles and rightly so: the trade mark may not be distinctive and will be considered immoral.
Profiting from tragedies is frowned upon but not completely unheard of. While big corporations try to benefit from an overall unpleasant (if not disastrous) situation, sometimes such acts are tasteless enough to leave one wondering: “who thought this was a good idea to begin with?”
Attempts to Trade Mark ‘Covid’
More than a dozen applications have already been filed at the United States Patent and Trademark Office seeking to register trade marks involving "COVID" or "coronavirus." Although a good deal of those bear uplifting messages (one of them already saying “We cured Covid-19”), it certainly can be considered insensitive as the pandemic is still gripping the world. A little closer to home, also the Benelux Office for Intellectual Property (BOIP) has seen a surge in trade mark applications related to the virus. The BOIP has in fact issued a statement saying they will be rejecting all such applications.
In Korea, since the government reported the first confirmed case of an acute respiratory disease in January (which is a symptom of Covid-19), a total of eight trade marks for “corona” have been applied for. In China, as of today, more than 1,500 coronavirus-related trade marks have been filed, including 37 applications containing, or closely associated with, hospitals (“火神山”and “雷神山”) and renowned doctors (the Chinese opthalmologist “李文亮”) in the central Chinese city of Wuhan, which is believed to be the epicenter of coronavirus outbreak.
But will the law allow a trade mark to be granted?
Can ‘Covid’ trade marks be distinctive?
For a trade mark to be registered, the term has to be distinctive. This means that a trade mark has to indicate the origin of a product, a specific undertaking, and thereby prevent consumer confusion. It is doubtful that a common term can be distinctive in nature unless it is used for products completely unrelated to the term. Use for related products or services causes the mark to lose its distinctive character and becomes descriptive.
Where the products and services for which protection is sought are health-related, the mark is likely to be descriptive. Descriptive trade marks will be refused registration. For example, the Benelux Office of IP (BOIP) in their statement said that “When a given event, such as the corona virus outbreak, makes headlines, the name used to refer to it quickly becomes descriptive. That can mean that a trademark application containing that designation will be refused by us”.
Another hurdle in the US is that applicants must show that they have a bona-fide intent to use the term on a particular set of goods and services. This is because US trade mark law reflects a first-to-use and not a first-to-file system. Most "coronavirus" applicants are, however, unlikely to have used the term before and therefore will not qualify for protection in the US. In systems like the European Union (EU), applicants who file an application can receive protection without showing any use of the mark.
Contrary to public morality or good faith?
Another ground of refusal is when the trade mark is contrary to public order and/or morality. This would include applications that are of bad taste and unethical in the context of the current situation of the world.
In the EU, this ground is interpreted to mean that the protection of a term as a trade mark would be against society’s “fundamental moral values and standards [at a given time].” Similarly, the Korean Trademark Act under Section 34(4) of their Trademark Act, says “Any trademark whose meaning, content, etc. conveyed to consumers is likely to harm public order, such as being contrary to moral norms, the prevailing moral sense of ordinary people cannot be registered”.
In the same vein, the Chinese National Intellectual Property Administration has released examination guidelines to address filings of marks that would be considered malicious, based on morality concerns. This concerns marks containing the names of people involved in the epidemic, marks related to the epidemic virus and disease, marks related to epidemic-related drugs, marks for protective and preventive products, and other marks related to the epidemic.
Trade mark refusals on the basis of lack of distinctiveness and public morality concerns are well established principles of trade mark law, which would be apparent to those who did not rush to be thfirst-to-file. So in case you are still thinking of filing an application on “Corona” or “Covid”, take our word for it and just don’t.
|Written by Fatema Danyal, IPKM LL.M. student 2019-2020. More blogs on Law Blogs Maastricht|