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COVID-19: Opportunistic trade mark applications face scrutiny

24 April 2020

The coronavirus pandemic is having a global impact on the economy, our social lives, and unfortunately for some, their health. Even during these trying times, people are attempting to benefit from the pandemic, with a rise of opportunistic trade mark filings.

This is not the first time we have seen trade mark filings that have followed high profile media stories of social and political significance, with past trade marks including BREXIT and JE SUIS CHARLIE.

Right now, applicants are seeking to register terms related to the pandemic, as they are very topical. Recent filings in the UK and EU include trade marks for ‘COVID-19’, ‘COVID-19 RAPID TEST’, ‘CORONAVIRUS’ and ‘KEEP CALM AND CORONA ON’.

However, applying to register a commonly used term is inconsistent with the true function of a trade mark, which is to guarantee trade origin. The trade mark should distinguish your goods and services, from those of another. Attempting to capitalise on general terms could backfire for these applicants.

It is questionable whether any one person can claim they have an exclusive right to words such as COVID-19, or CORONAVIRUS, that are being used in headlines daily, and on social media. If a trade mark is descriptive or generic, it is not capable of registration. The descriptive nature of a trade mark will be determined by the goods and services applied for, in reference to the trade mark. So whilst ‘COVID-19’ may be capable of distinguishing some goods and services from the products of other traders, this would not be the case where the goods and services related to the medical field.

There are other grounds, such as Section 3(3) of the Trade Marks Act 1994, whereby registration of a mark is prohibited if it could be considered offensive, or deceptive. The threshold for finding an application objectionable under Section 3(3)(a) ‘…contrary to public policy or to accepted principles of morality’ is often difficult due to the subjective nature of what is considered to be immoral, as there needs to be a balance between morality considerations and freedom of speech. Nevertheless, whether these marks are objected to on this ground, these filings may be viewed in bad taste by consumers.

The second provision under Section 3(3)(b) concerns trade marks that are likely to deceive the public. A mark such as ‘COVID-19 RAPID TEST,’ for ‘apparatus for carrying out diagnostic tests for medical purposes’ could be considered misleading on examination, given that testing for the virus has not been made available to the mass public. It questionable whether the applicant can deliver the ‘rapid’ results, in relation to testing for the virus, arguably the trade mark could be considered both descriptive and deceptive, and therefore incapable of registration.

So far, none of these coronavirus filings have progressed to publication, at which point, they could still be opposed by third parties, on the ground of bad faith.

It remains to be seen whether these marks will be accepted for registration by the UKIPO. Even if these marks manage to get registered, it would not give the applicant an exclusive right to use the phrase in the UK.

Whilst a trade mark holder can prevent other traders using the mark, as an indicator of origin, it does not afford the rights holder a monopoly to use the mark solely, which would be impossible in the current climate.

When used in the news, or on social media, these terms CORONAVIRUS and COVID-19, are not being used as trade marks, they are being used descriptively in respect of the pandemic. Applicants should think carefully when applying to register a mark, ensuring it isn’t generic, or fuelled by topical news, as it may not meet the threshold for registration.

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