The COVID-19 pandemic has led to numerous companies seeking to register COVID-19 related trade marks in relation to a wide range of goods and services in many countries throughout the world.
In Australia, COVID-19 related applications include:
The above marks have been filed since March 2020 and are unlikely to be examined until the second half of this year. It will be interesting to see the stance adopted by IP Australia in connection to COVID-19 related trade marks.
The United States Trade Marks Office has previously taken the stance that BOSTON STRONG, which was used after the Boston bombings, was a term so widespread that it had become ubiquitous and could not uniquely identify any applicant’s goods and services.
The use of the terms COVID-19 and CORONAVIRUS are arguably much more widespread than BOSTON STRONG. However, it would be surprising if the Australian Trade Marks Office adopted a similar universal position for COVID-19 related marks.
Shortly after the September 11 attacks, a number of applications were filed in Australia including “September 11” for wine and “NINE ELEVEN” for clothing and games. These applications were accepted for registration without any objections being raised. This indicates that the Australian Trade Marks Office is unlikely to adopt a blanket ban on marks of this nature without regard to the goods or services.
It is possible that the Australian Trade Marks Office will treat COVID-19 related marks in a similar way to the MH370 mark. The term MH370 relates to the Malaysian Airlines flight that went missing in 2014. Within a week following the disappearance, an Australian company sought to register the mark MH370 for entertainment services. This application faced two objections, namely:
- s41 – the mark was descriptive and conveyed a specific meaning to the Australian public as to the subject matter of the relevant services, and as such, one company should not have a monopoly over the mark; and
- s42(a) – the mark was scandalous on the basis that it would offend a section of the community (including relatives of victims of those aboard flight MH370).
The Applicant requested a hearing and the MH370 application was ultimately refused based on the s41 ground. In reaching this decision, the Hearings Officer stated the following:
…at the filing date the Trade Mark conveyed a specific “meaning to ordinary Australians” as the flight number of the aircraft missing since 8 March 2014. When used in relation to the Applicant’s services the Trade Mark indicates that the subject matter of those services is the missing aircraft MH370. It is not adapted to distinguish the Applicant’s services from the similar services of other traders.
It is my understanding that since the application was filed a number of documentaries have now been made with flight MH370 as the subject matter. The Applicant also made an oblique reference to the existence of a documentary during the course of the hearing. It is obvious to me that none of the use of MH370 by other parties as the subject matter of a documentary has been actuated by improper motive, but rather for the sake of the signification that MH370 ordinarily possesses.
The second ground was not considered in detail in the decision.
COVID-19 or coronavirus trade marks will likely be subject to objections if it appears that the owner intends to use the trade mark in a manner that will be offensive to victims of COVID-19, or where the subject matter or intention of the goods or services (e.g. books, documentaries, medical services, medications) relates directly to the COVID-19 virus. Where the trade mark is descriptive in relation to the goods or services, it is highly unlikely that the Trade Marks Office would allow any meaningful monopoly to be granted over the terms COVID-19 or coronavirus, or slight variations on these terms.
Trade marks that allude to COVID-19 in an indirect manner or include the term as part of a larger distinctive logo are much less likely to be subject to objections. However, such trade marks are unlikely to be enforceable against others using the terms COVID-19 or coronavirus in good faith for descriptive reasons.
In short, any attempt to try and monopolise the terms COVID-19 or coronavirus in order to make a quick profit is likely to be an expensive failure. However, traders wishing to use these terms legitimately as part of a distinctive composite mark will likely have good prospects of success, provided that the trade mark in question is not likely to be perceived as offensive.