The EUIPO’s approach to ‘Covid-19’ trade mark applications
The European Union Intellectual Property Office (EUIPO), just like many other IP offices in the world, has recently seen an incredible spike in Covid-19 related Trade Mark applications. This blog presents EUIPO’s approach in examining trade mark filings that relate directly or indirectly to, or in any way evocate, the Covid-19 pandemics.
EUIPO adopted a policy for the examination of Covid-related filings, the aim of which is to avoid the unfortunate event in which an exclusive IP right is granted unjustifiably or that the exclusivity deriving from the IP right may immoral. EUIPO’s policy makes a distinction between marks that make a direct or indirect reference to ‘Covid-19’ and marks that simply refer to the term ‘virus’.
A. Trade marks applications related directly or indirectly to Covid-19
If trade mark applications do not incorporate the term ‘Covid’ or ‘Covid-19’ as such, but the reference to the virus is indirect, there should not be a problem for reasons of the Covid reference. This is the case for marks that do not mention the virus directly but only allude to it, or those that only contain a reference to the virus as part of a larger distinctive logo. See, for example, ‘Social-Distance-1.5’ for beer distribution services, or ‘Techno Kills the Virus’ (EUTM 18279078, for classes 9, 21, 25, and 41).
However, if a trade mark application makes a direct reference to Covid-19 (either in words or in an image), different grounds of refusal may apply, hence the filing is likely to result in an objection by the Office. There are four grounds of refusal that Covid-related trade mark applications are likely to face.
Signs that consist exclusively of (a) a descriptive indication under Article 7(1)(c) EUTMR, such as the ‘Covid’ term (or even when it is combined with other non-distinctive signs), and (2) it is applied for goods and services that are inevitably related and linkable to the virus (such as pharmaceutical goods, disinfectants and protective masks, software, etc), these signs will not be registrable. An hypothetical example of this could be ‘a cure for Covid’ applied for Class 5.
Signs that lack distinctive character will be refused under Article 7(1)(b) EUTMR. This ground applies where the mark conveys a value, a motivational or inspirational statement, that is not capable of conferring commercial origin, regardless of the goods/services that the application is applied for(!). In such cases, in fact, the sign would be nothing more than a non-distinctive slogan, such as ‘fight Covid, wear a mask, stay safe’ or ‘We can prevail over Covid with a united approach’. It is nonetheless important to bear in mind that not all slogans will be objected to, only the ones that are not capable of conferring commercial origin will.
Signs that are contrary to accepted principles of morality are objected under Article 7(1)(f) EUTMR. This ground will be relied upon in situations in which (1) the mark (only if explicitly consisting of the term ‘Covid’) is used in relation to goods and services that cannot reasonably and in good faith be related to the virus; and (2) the message conveyed by the sign is unacceptable. These two criteria are cumulative. This ground for refusal becomes particularly relevant in situations in which a Covid-related word/figure is being trivialized and the applicant is seeking to obtain undue financial gain by freeriding on the pandemics.
Signs that are contrary to public policy cannot be registered under Article 7(1)(f) EUTMR. This will only be relied upon in situations in which the mark conveys a message that is contrary to health regulations or administrative measures. This could, for example, be invoked in relation to a sign that would incite the public to defy social distancing.
Regardless of the possibilities for the office to rely on the above-mentioned absolute grounds for refusal, the EUIPO’s statistics show that since the outbreak of the pandemics, there were more than 100 Covid-related filings (some of which are now in in their opposition period). See, for example, the word mark ‘CTT Corona/Covid Turbotest’ (018276300, for classes 5 and 44), or the figurative mark ‘The Post-Covid Summit’ (018271804, for classes 35 and 41), or ‘Fight Covid19’ (018245507, for classes 9, 16, 21, 25 and 26).
B. Trade marks applications that more generally refer to the word ‘virus’
The Office has received some applications that generally refer to the word ‘virus’ without specifying the type. These marks don’t prima facie present the issues outlined above. See the registrations of marks such ‘Techno Kills the Virus’ (figurative - 018279078, classes 9, 21, 25 and 41), or ‘Anti-VirusPro – Anti Virus Next Generation’ (figurative - 018275244 for class 5), or ‘Virusafe’ (word mark - 018241348, for class 5).
| Written by Virginia Debernardi, IPKM alumna 2019/2020
More blogs on Law Blogs Maastricht