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COVID-19: The Commercial Pandemic And Its Trademark Implications

Will we soon be seeing baseball caps, T-shirts, bags or glasses with “COVID” marks and logos on them? The first applications to register the name – alone or in combination with a number or even another term – have been pouring in since last February.
by: Marc Auxenfants
photo: Anna Katina
featured: Laure Chemla

Listen to article (Part I)

Some 60 trademarks awaiting authorization have already been filed at intellectual property offices worldwide. This is not just for medical products but also for clothing, bags, and drinks… This commercial pandemic was first declared in the United States, with the “COVID-19-VAX” vaccines. It has then affected the Benelux countries, the EU, the United Kingdom, Canada, Turkey, South Korea, and Argentina… Can a company use the name of a coronavirus to sell its products and services, especially when the epidemic has already claimed more than 30,000 lives worldwide?

Laure Chemla is a lawyer specialized in Intellectual Property Law and personal data protection at the international law firm CMS. For her, appropriating these names for marketing purposes means diverting trademark law from its purpose of protecting the consumer. We spoke to Laure to understand how trademarks work and whether “COVID” can be registered as a trademark in any form.

What is the primary purpose of a trademark?

A trademark is a private right on a name or logo that a company registers with an intellectual property office in order to prevent its use by another company. For example, I cannot market T-shirts with the name “Nike” because a trademark has already been registered under that name. A trademark is therefore used to identify a product or service. It must enable the public to identify a product or service with a particular company. In the case of “COVID”, the question arises as to whether a person or a company can grant itself a monopoly on the name.

The national intellectual property offices (IPOs), such as the BOIP at the Benelux level, are responsible for receiving and registering trademark applications.

“The term is primarily associated with a global pandemic. It is therefore difficult for the public and consumers to equate it with a brand or a commercial enterprise.”

What considerations are taken into account when registering a trademark?

Firstly, the name or logo must not have been previously registered and marketed. They must therefore be available. Secondly, the name and logo must be distinctive: they must not describe the nature or quality of the product or service in question.

Also, terms like “Water” or “Dress” cannot be protected by a company (e.g. perfumes or cosmetics), or monopolized for commercial activity. Finally, the name or logo must not offend public order or morality.

Articles 2.2 and seq. of the Benelux Convention on Intellectual Property (Trademarks and Designs) list the grounds for refusal or invalidity of a trademark registration.

How long is the trademark registration valid for?

The trademark is protected for ten years. The registration can then be renewed indefinitely for further periods of ten years. The only condition is that the activity must be launched within five years from the date of registration of the trademark.

Beyond this period, a third party who wishes to use the name may file an action for cancellation with the office where the trademark was registered. It is important to note that registration is also limited geographically: i.e. to the territory in which the company wishes to protect its trademark: nationally (BOIP, for Benelux), in the European Union (EUIPO), or worldwide (WIPO).

Listen to article (Part II)
Can “COVID” be considered unique?

I’m not sure. Today, the term is primarily associated with a global pandemic. It is therefore difficult for the public and consumers to equate it with a brand or a commercial enterprise.

In terms of distinctiveness, I’m not sure that we can allow one actor to capture that will essentially prevent all others from using it.

Furthermore, since this is a serious and fatal disease, there are ethical and moral principles to be observed. The use of a term describing this epidemic could possibly be considered contrary to public order and morality.

There are many precedents: the application for registering “I am Charlie” had been rejected on the basis of the principle of distinctiveness, because they could not be used by a single economic actor. The solidarity slogan “Pray for Paris” was also rejected, for breach of public order.

Counter examples include: In 2011, EUIPO had considered that the “H1N1” symbol could be registered for clothing. An Italian company was allowed to use the name, albeit in a slightly stylised form, for clothing, shoes, hats, jewellery and glasses. Another Italian company applied to BOIP for accelerated registration of the trademark “COVID-19 SURVIVOR“. The BOIP issued a provisional refusal notice against the application for registration. The reason was not specified. It is, however, doubtful that if it has previously refused this application for registration, it will refuse other applications.

“COVID can be used in a domain name. Unlike trademarks, there is no legislation on this subject to date.”

Can a mask or vaccine be branded as “COVID”?

This seems complicated to me even though they are medical products intended to prevent and treat the epidemic. Here, there is a direct link between the name of the virus and the medicines, masks and health products used to fight the same virus. It would therefore not surprise me to see the request being refused.

However, as with “H1N1”, trademark applications for T-shirts, glasses and other socks should have a better chance of being accepted. It will be up to each IP office to decide on a case-by-case basis whether to allow it.

Can a rock band, for example, use the name and logo?

The same goes for rock bands: they will be able to take over the name or logo of the virus, as the music has no direct link with any product or service directly related to the virus.

If “COVID” were to be registered as a trademark in the Benelux or in the EU, a public or legal entity could always nullify it, claiming that it does not respect distinctiveness or is not compatible with public policy and good morals.

What about fictional characters in a book, film or game?

I could name my fictional character “COVID”, whether it is a book, film or game because it would now fall under the purview of copyright.

But if the trademark already exists, then its owner would have to prove that the author seeks to compete with it or to take undue advantage of the trademark.

“The registration of the terms “COVID” or “COVID-19″ should be refused, because it is a misuse of trademark law for marketing purposes.”

What about on the Web?

COVID can be used in a domain name. Unlike trademarks, there is no legislation on this subject to date. In fact, some have already registered the domain name under different extensions (.be, .fr, .com…).

According to you, does the brand “COVID” have a chance to be registered one day?

The registration of the terms “COVID” or “COVID-19” should be refused, because it is a misuse of trademark law for marketing purposes. It is also contrary to the purpose and spirit of trademarks, which is to reassure and protect consumers.

I think it is a shame and disgrace that in the current situation, people still find the time and energy to misuse trademark law for short-term marketing reasons.

What I find even more appalling is when the approach comes from health professionals, who use such brands to market masks, vaccines or medicines. There are ethical considerations that need to be taken into account and it would be incomprehensible if a company in the health sector did manage to register the “COVID” trademark.

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