The Coronavirus pandemic has left very few aspects of our lives untouched. In a desperate bid to return to some semblance of pre-COVID normality, the global tech and pharmaceutical industry has exploded with innovation. New vaccines hold promise of a COVID-free future, whilst some products have been repurposed to suit a socially-distanced way of life – this German café, for example, went viral on social media for their rather original use of swimming pool noodles.
The lucrative potential of patenting new products or services and of protecting your company’s brand through trade mark registration, is well-known and Covid-19 has not changed this. Intellectual property offices around the globe are seeing a surge in attempts to register “Coronavirus” and “COVID-19” related terms as trade marks. Some 1,500 filings in China, 50 in the US, and 60-70 in the UK and EU are still being examined by the relevant intellectual property offices.
Are these filings likely to succeed? Will the future potential owners of these trade marks be sitting on a pot of gold, or will have they thrown money out of the window?
The latter is most likely as Deborah Tastiel, IP specialist at Asserson, explores.
Could a COVID trade mark ever function as a badge of origin?
The basis of a trade mark is that it enables consumers to distinguish the goods and services of a business from those of another. It functions as a “badge of origin”, telling the consumer where the goods or services come from – for example, a consumer who sees a bitten apple on a computer automatically knows which company has produced the gadget. It is unlikely that the public would see “Coronavirus” related marks as genuine brands: the average consumer seeing a t-shirt with a “Coronavirus” logo, for example, would not automatically be able to associate it with a certain clothing retailer.
Could a COVID trade mark be considered distinctive?
A trade mark will be refused registration if it is not distinctive and is descriptive of the products/services it sells, i.e. if the mark designates the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services.
Whilst this can usually be mitigated by showing that despite being descriptive of the goods or services it is distinctive because known by the public, it is unlikely that this would apply here. The TM owner would have to show that its coronavirus brand is known by the public (e.g. by showing intensive use of the mark, market share, marketing, etc.). It is unlikely any of these applicants would be able to show distinctiveness of a coronavirus brand after only a few months.
On this basis, one would not register the word “Apple” to sell apples, since this would not distinguish these apples from others. Similarly, a company seeking to register “Coronavirus test” to provide testing for Coronavirus is unlikely to succeed, as it would be entirely descriptive of the goods provided under the brand, preventing other similar companies from using the words to describe their product.
Can a trade mark be rejected solely on principle?
A third reason as to why an application for a “Coronavirus” related brand might fail, is because the mark would be contrary to “public policy” or an accepted moral standard. The examiner will consider this society’s fundamental values as they stand today, as well as the social context and factors on how the public is likely to perceive the mark.
Considering the far-reaching spread of the pandemic, the number of lives it has claimed and the associated mental health issues which these uncertain times have brought on, it is likely that any such marks would be considered insensitive and inappropriate and thus be refused registration.
Trade mark law is a highly nuanced area of practice, where abstract concepts meet the hard facts of the law. It is likely that a “Coronavirus” related trade mark filing would fail on one of three grounds mentioned above. In the event that any such mark would be granted, it is unlikely to be perceived well by the public. Whilst smart trade mark filing can hit the jackpot, business owners should seek the advice of the right marketing team and lawyer to avoid wasting costs on an application unlikely to succeed – once you’ve paid fees to the intellectual property office to file a mark, you will never get these back.
Article written by: Deborah Tastiel