Since February, several people have rushed to register trade marks for ‘COVID’ and ‘CORONA’ internationally. In fact, it is not unusual for global events to trigger trade mark applications. Applicants may seek to take advantage of a dire situation to secure exclusive rights over current buzz-words, in this case, profiting from the pandemic.
Several such trade marks are awaiting authorization from intellectual property offices worldwide and have been filed for medical products and also for clothing, bags, drinks and other merchandise. Some examples include the trade mark ‘CoronaClean’ for use on detergents for household and medical use and the trade mark ‘Covidex’ for hand sanitiser and disinfectants. In the US, trade marks such as “We Cured COVID-19” as a mark for both apparel and providing information in the medicinal field have been attempted. Additionally, several variations of ‘I Survived Corona’ for clothing, footwear and headwear, amongst other goods have been attempted.
Applications were unsuccessful so far, showing that these attempts are a result of misguided trade mark applicants or a lack of understanding of trade mark law. Firstly, trade marks act as a badge of origin where they link the product to the brand. Therefore, for a trade mark to be registered, it must satisfy the principle of distinctiveness. The issue with trade mark applications for terms like ‘COVID’ or ‘Corona’ is that these terms are so well known by the public that it is unlikely that they will be capable of functioning as trade marks. Consequently, these terms can no longer be used to uniquely identify the brand for which the application is sought and as a result, a person or a company cannot be granted a monopoly over it. A similar situation arose in France, where applications for trade marks: ‘I am Charlie’ or ‘Je suis Charlie’ were rejected due to a lack of distinctiveness because of the phrase’s wide use by the community.
Secondly, applicants for a trade mark who do not demonstrate that they have an intention to use a mark on indicated goods and services can be acting in bad faith if there is no rationale for the application for registration. To register a mark which is intended for marketing purposes during the pandemic is short-lived, whereas a trade mark is a monopoly over a sign and (given that it is in use, renewed and unopposed) it can last indefinitely. Therefore, it would be unwise for an applicant to attempt to register trade marks for ‘Corona’ or ‘Covid’ when their marketing capacity might only last for the duration of the pandemic.
Finally, even if the distinctiveness requirement is satisfied, ethical concerns might be raised for those applications seeking to capitalize on the pandemic. If such trade mark is seen by the relevant public, or a significant part of it to be in breach of society’s standard moral norms, such marks could possibly be considered contrary to public policy or against principles of morality. the international fight against the pandemic which has taken the lives of many could lead trade mark offices to consider trade marks that refer to the virus, especially when used for unrelated goods, to be in breach of these grounds. Such was the case for trade mark BIN LADIN applied for by an import/export company which was rejected in breach of public order and moral principles
How MacLachlan & Donaldson can help
MacLachlan & Donaldson can advise you or your company before committing to a brand name or slogan or deciding to rebrand and to register a mark. You will be guided through the requirements of the law to have a mark which can be protected in the long term. MacLachlan & Donaldson can also give you the advice you need regarding any ethical implications your mark may have before starting the registration process.
Should you wish to register a trade mark or require any further information or assistance regarding your registered trade marks, please do not hesitate to reach out to MacLachlan & Donaldson at mail@maclachlan.ie or to Ansons at info@ansons.co.uk.