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Prayank Khandelwal

Registering Trademark For COVID?

Authors: Vaishnavi Joshi and Joanne Philip

When the word ‘COVID’ is entered on the search engine, you are bound to get over six billion results. COVID, a word that is associated with an acute infectious respiratory disease appears everywhere from media, everyday conversations, scientific studies and medical reports. While the global pandemic has resulted in the stagnation of the world, there are a few out there trying to take advantage of this predicament by applying for the protection of trademark for COVID, and CORONAVIRUS. These attempts can clearly be seen to have been done in bad faith. The purposes can be seen ranging from medicines, hand sanitisers, and pharmaceutical products. The term is being used for anti-virus software as well, where a trademark application was seen to have been filed for the use of the term ‘Corona’ for a ‘downloadable computer security software’ under class 9.

In the past few months, multiple trademark applications are being filed for the protection of terms such as ‘Corona Sanitizer’, ‘CoroFlu’, ‘Corona Safe’, ‘COVID Sanjeevani’, ‘COVID RELIEF’, etc. Various pharmaceutical companies have filed for trademark applications as they have manufactured many vaccines and products to overcome the virus.

Registration of ‘COVID-19’ and ‘CORONAVIRUS’ Related Marks

It must be highlighted that a trademark’s main function is to specify the source of the goods and services. The consumer must be able to differentiate between the goods which are of the same kind coming from distinct producers by the trademark. The terms ‘COVID-19’ and ‘COVID’ are not generic names, except they are an acronym of ‘Coronavirus Disease 2019’, which are English terms. These terms forced their ways into everyday speech in order to express the infectious disease that has been spreading around the world.

It is unlikely that the terms ‘COVID’ can be registered as a trademark mainly for medical services, medical products and drugs that are associated with the object of tackling Coronavirus and other diseases caused by it. For such types of goods and services, this trademark can be regarded as descriptive and is insufficient to be considered as distinctive in character. With the label of the word ‘COVID’, the medicine would denote the disease it is intended to oppose. The regulation at present does not authorise the registration of trademarks that are of a descriptive nature, the reason being, it would result in the monopolisation of words to which participants belonging to similar or same trade must have equal admission. Addition of prefix or suffix for notifying that particular good or service fights the virus will not reform its descriptive nature.

Deceiving the Public

Section 9 (2) (a) of the Trademarks Act, 1999 lay down that “a mark shall not be registered as a trademark if it is of such nature as to deceive the public or cause confusion”. This provision is intended to obviate the registration of those marks that result in confusion or deception among the public. For example, by using the mark ‘NOCORNA’ for goods that cover pharmaceuticals, medical preparation and sanitary preparation for medicinal purposes, a normal consumer is bound to believe that the medical preparation will prevent or cure the Coronavirus. Given that an antidote for the virus has still not been found even with multiple researches and mega-trials being conducted, the goods sold under the umbrella of ‘NOCORONA’ or other similar marks actually showcase a remedy for the virus. It is evident from this that such marks have the ability to deceive or confuse the public at large making them believe that the goods sold by them are effective when actually they are not.

The Draft Trademarks Manual, 2015 works as a guide when it comes to the application of the Act. It has stated that section 9 (2) (a) of the Trademark Act, 1999 can be used even in matters where ‘misrepresentation with respect to the characteristics of goods or services’ exists.

Public Order and Morality

In the matter of registration of trademarks that are opposed to public order or morality, trademark laws all around the world include provisions prohibiting such registration. Assessors must have the ability to be able to differentiate between ‘offences’ that leads to distaste or sexual or vulgar references from those offences that can trigger actual outrage or can damage the principles of morality. A key problem is the nature of finding out if a trademark is really offensive, as it is subjective. Decisions on trademark cases mostly carry some subjectivity. The concept of morality can change over time and also vary depending on the culture or geographic area. As each examiner will naturally have a certain worldview, having diverse decisions on cases that are similar is common. To avoid such diverse decisions in similar cases, common logic and application of neutral rules must be adopted by the examiners.

The COVID-19 pandemic has been nothing but a tragedy. It is arguable that registration of trademarks related to the virus are clearly offensive to those who are suffering or have suffered due to the present health crisis. China was the first country to face the novel Coronavirus and the IP Offices therein received huge numbers of application registering trademark associated with the disease. However, several such applications were rejected on grounds of prohibition of protecting signs that are ‘detrimental to socialist morals or customs, or other unwholesome influencers’ as per Article 10 (1) (8) of the Chinese Trademark Law. The likelihood of trademarks relating to the virus falling within the public order or morality prohibition can elevate if the trademark applied-for recognizing the virus in a prejudiced, disrespectful or vulgar way.

Registered Marks for Corona

A question that now arises is whether marks that are already registered like ‘CORONA’, ‘CORONA REMEDIES’, ‘COVIDIAN’, etc. can be cancelled on account of the potential to deceive or confuse the public or loss of distinctiveness? This question arises because consumers may likely associate the term ‘COVID’ or ‘CORONA’ to the virus. The registration of a trademark can be cancelled on various grounds as per section 57 of the Trademarks Act. One of the relevant grounds under this section is “entry wrongly remaining on the register”. So, one can assume that as a result of a change in situations, the mark has presently way warded from its distinctiveness or has the possibility of deceiving the public and therefore wrongly remain in the register. Nevertheless, the possibility that some proprietors have decided in rebranding themselves or their products, taking into account the connection with a dangerous virus is high.

Conclusion

Given the basic objective of trademark law, opportunistic applicants, looking to ‘cash in’ on the current pandemic are likely to be unsuccessful in their futile attempts to profit from such ‘trademarks’. Most of the applications are being filed on the basis of ‘proposed-to-be-used’ in connection with hand sanitisers, medicines, pharmaceutical apparatus, anti-virus software, etc. Trademark examiners should see that terms related to ‘COVID’ or ‘CORONAVIRUS’ does not serve as the identifying source of goods or services. Should you require any assistance for registering your trademark, hit us up at photon.ip@photonlegal.com . Stay Corona safe!

About: Prayank Khandelwal