Coronavirus-related branding unlikely to win trade mark protection

Out-Law Analysis | 21 Apr 2020 | 9:48 am | 3 min. read

Businesses seeking to capitalise on the current global health crisis to obtain monopoly rights for coronavirus-related brands are likely to face barriers to doing so under trade mark law.

A study by Pinsent Masons, the law firm behind Out-Law, has identified more than 20 examples of individuals and businesses lodging applications for UK or EU trade marks for signs referencing the virus in some way.

Examples include applications to register the word 'Coronavirus' itself for use in the context of several classes of goods, including non-medicated cosmetics and both non-alcoholic and alcoholic beverages, and for the phrase 'Keep Calm and Coronavirus On' in relation to clothing, leather goods and household utensils, among other classes of goods.

Other applications concern coronavirus-related signs that, if granted as trade marks, would provide the brand owner with a monopoly right which means that the owner could prevent others from applying these marks to goods such as bags, games, food, medical equipment and education.

With coronavirus the overriding issue of the day, it is perhaps no surprise to see businesses exploring trade mark applications for related new brands to promote their goods and services. However, most applications of this nature are expected to fail under trade mark law. This is because the signs are likely to be considered inherently non-distinctive or may be even contrary to public policy or to accepted principles of morality.

The law on distinctiveness

Both the UK Trade Marks Act 1994 and EU Trade Marks Regulation 2017 state that a trade mark should be refused registration if it is devoid of distinctive character. A trade mark needs to be distinctive in order to differentiate its goods and services from those of any third party. By obtaining a trade mark registration, the owner obtains an exclusive right to that name for the goods/services it covers in a particular jurisdiction, and the ability to enforce its exclusive right against any third party registration and/or use of a similar name in that jurisdiction.

Regardless of the goods/services it covers, 'coronavirus' and 'Covid-19' in particular as the official or commonly accepted names for the virus are generic terms which may be considered non-distinctive in relation to certain goods and services. The names are unlikely to serve as an indicator of the commercial origin of a certain brand since consumers may not regard them as such. The law dictates that these should be names that are freely available for all to use and no third party should be given an exclusive right to only use a generic name in any jurisdiction. If they were and registrations were granted, this would open up any use of the virus names – in relation to the goods/services covered by the registration – to a multitude of trade mark infringement actions.

This is not to say that generic names when used with additional elements cannot provide an overall distinctive overall impression and therefore be eligible for trade mark registration. However, the virus names on their own should always be considered non-distinctive.

The law on public policy and morality

While many signs are likely to be deemed non-distinctive, those that are able to demonstrate distinctiveness may still fall foul to other provisions of trade mark law that prohibit signs being registered as trade marks where this would run contrary to public policy or to accepted principles of morality, or otherwise deceives the public.

Given the current global struggle against the pandemic, the trade mark offices may deem the registration of a trade mark that contains either of the virus names, particularly in relation to one which covers general consumer goods such as clothing or games, to fall foul of this absolute ground.

In the UK Trade Marks Act 1994, Section 3(3) states that a trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality, or of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

Particularly in the case of signs that cover medical-related goods and services, the office will be reluctant to accept trade marks that contain the virus names as this could deceive the public. There is a risk that third parties register these names without ever going on to use the marks – this can be particularly dangerous in instances where the names suggest they are going to be used to combat the virus, such as in the case of signs that apply to medical equipment.

There are previous examples of trade mark applications falling foul of this area of trade mark law in the UK, EU and US where names including 'Ebola', 'Taliban' and 'Terrorist' were refused for trade mark protection.

Summary

It remains to be seen whether the UK and EU trade mark offices actually accept any of these applications and moreover, whether any other third party tries their luck by filing applications containing either 'coronavirus' or 'Covid-19', or any related name. Given the impact of the virus both on a health and economic front, this may influence trade mark examiners in their assessment of these trade mark application for registration.

Matthew Harris is an expert in trade mark law at Pinsent Masons, the law firm behind Out-Law.