Trade mark strategies in a pandemic outbreak

As with all significant events, novel viruses being no exception, people capitalise on ideas for products and services that could be relevant. For consumer goods, a commercially necessary first step is to launch trade mark applications in the expectation that they will result in registered and therefore more protectable marks.

Coronavirus impact on IP and product sales

For intellectual property rights owners, the coronavirus pandemic will result in winners and losers. One casualty to date is the famous CORONA beer from Mexico which is no longer being produced. The brand owners, Cerveceria Modelo de México, say that this is because of the fact that government order deems beer production to be a “non-essential” activity.

People may have assumed that any product called “corona” is exploitative and inappropriate in the present crisis. This is not a view shared by all marketing and branding experts. When CORONA beer is back in full production, the notoriety element may even enhance sales. This effect could also just work for other existing trade marks that contain the word “corona”. But the marketing value of some existing “corona” marks may well be in jeopardy.

‘Old’ Corona trade marks

‘Corona’ – a word used in English since the 16th century – originally meant “crown” or “garland” in Latin. It has always been a prestige term; this has made it appealing as a component of trade marks and business names. People may recall the TOYOTA CORONA motor car that was in production towards the end of the last century, but there are numerous other examples not least the numerous registered marks that relate to CORONA beer.

Unconsciously ahead of the curve, a French company by the name of Corona Medical obtained registration in 2005 for the EU trade mark CORONA to cover medical apparatus and other items used in hospitals, clinics and retirement homes. The specification of part of that mark lays emphasis on a connection with the care of the sick and elderly at home. It would be interesting to see if the company thinks it can still capitalise on its mark with new products, but in contrast with the Mexican beer, the medical context is likely to mean that the name is just too inappropriate.

A search of the trade mark register at the EU Intellectual Property Office shows some seemingly prescient trade mark registrations such as CORONA DETECT (2016) covering a variety of veterinary goods and services. A logo prominently incorporating the words CORONA PROTECT was registered as an EU trade mark in 2012 to cover, amongst other things, masks with air filters. It could still be very useful.

It is unfortunate however that many perfectly good trade marks have now become unusable. A similar situation may have obtained in connection with ISIS. Oxford University’s research and commercialisation company changed its name from Isis Innovation to Oxford University Innovation in 2016 for perfectly good brand value reasons and the existence of a prominent terrorist organisation may have had no connection.

Huawei Technologies Co Ltd registered the EU trade mark HUAWEI CORONA with respect to telephony and software. Given the association made by some very misinformed people between the pandemic and the impending roll-out of the 5G network, this might sound somewhat sinister. But it must be remembered that the trade mark application was filed in 2011. That mere fact will not deter the most ardent conspiracy theorist but Huawei may wish to think through the need for such a trade mark when it becomes due for renewal in little under a year’s time.

New ‘Corona’ trademark applications

Since the pandemic became widespread in March, there has been an avalanche of applications throughout the world made for marks that exploit the words “corona”, “coronavirus” and “covid”.

Trademarks applications related to the coronavirus in The United States

In the US, applications have included CORONABABY, COVID KID, BE COVIDGILANT, THE CORONA YOU WANT and CORONAVIRUS SURVIVAL GUIDE. There has been an application for the provocative slogan CORONAVIRUS: MADE IN CHINA – and the not so provocative I SURVIVED THE CORONAVIRUS. The Edibles Club LLC has filed for COVID19 in a slightly stylised word form for t-shirts. A company going by the name of “Coronavirus LLC” has applied for a very fancy stylisation of the word CORONAVIRUS for music albums. Applicants are also seeking to register SOCIAL DISTANCE FITNESS and SOCIAL DISTANCING CBD OIL. The US Patent and Trademark Office adopts very stringent procedures and at least some of these marks are unlikely to proceed to registration.

Trademarks applications related to the coronavirus in Europe and the rest of the world

Relevant trade mark applications have also been made in the EU itself and in member states such as Spain and Italy, in ex-member states such the UK and elsewhere such as New Zealand and China. In China, initial examination of coronavirus-related trade mark filings have been fast-tracked by the Chinese registry with some applications now proceeding to the post-examination stages of the registration process.

A number of relevant applications are presently subject to examination at the UK and EU Intellectual Property Offices and there are likely to be more in the near future.

In the UK, one applicant has filed for a number of closely related trade marks based on the phrase KEEP CALM AND CORONAVIRUS ON, to cover clothing generally including protective clothing. “Covid” inspired trade mark applications are also being examined, such as VCOVID in multiple goods and services classes, COVID WARS for a similarly wide range of items and COVID-19 RAPID TEST (logo) for blood testing and diagnostic apparatus. A logo containing the words LEITHAL SANITISER C-19 (sanitisers, cleansers and antibacterial lotions) has been filed by the Gleann Mor Spirits Company Limited of Edinburgh with a very intentional misspelling. Physicool Limited has applied for COVID-CHEX with respect to sanitisers and medicated balms. It has also filed for CORONA-CHEX for the same range of goods.

The EU Intellectual Property Office is currently examining the stylised trade mark MASK COVID, that has been filed by a French applicant covering medical equipment and services and a logo that incorporates the words CORONA VIRUS FREE applied to equipment and clothing for medical personnel and patients. It is premature to predict the outcome of any of these applications.

Trademark Analysis

On account of the pandemic, there has been a decline in trade mark filings globally since at least mid-March. But the trend has been bucked for “corona” and “covid”-related trade marks for medical devices and equipment with a significant number of these applications citing the word “masks”. Without making comment on the likelihood of registration of any of the examples mentioned (there may be a number of factors that will not be obvious or within public knowledge), it would seem as if at least some of them are opportunistic attempts to capitalise on the newly ubiquitous familiarity of the words “corona” and “covid” such as KEEP CALM AND CORONAVIRUS ON and COVID-CHEX.

Many applications will in any event be doomed to failure. It is not usually possible to protect a slogan on a t-shirt as a trade mark unless it distinguishes the goods of one proprietor from those of another, but the slogan will also need to be distinctive in itself rather than just a mix of everyday words.

Some of the marks may just be in poor taste (CORONABABY) but opportunism or bad taste are not necessarily barriers to registration. The recent ruling in the Court of Justice of the European Union in the Fack Ju Göthe trade mark case says just this. Accordingly, the barrier is possibly now higher in assessing one important ground for refusal of registration of a trade mark which is that it is “contrary to public policy or accepted principles of morality”. All elements and the generally prevailing moral values of society must be taken into account in the assessment of “accepted principles of morality”.

A “corona” or “covid” mark is more likely to be refused registration on the grounds that it is deceptive or has no distinctive character. This may be the reason why several of the applications under examination in Europe are stylised words or logos (the distinctiveness comes from the fanciful elements not from the words). But if the trade mark is found to be deceptive because it makes false or exaggerated claims that the product or the service has some particular efficacy in eliminating or mitigating the effects of the coronavirus, it will be refused registration. Any trade mark must fulfil the basic criteria for acceptance on to the register.

Trademark guidance for registering coronavirus related products

There is certainly a trend to be followed for “corona” and ”covid” trade marks at the present time but businesses that are genuinely marketing and selling goods and services that are relevant to the fight against the virus should not hold back from filing appropriate trade marks.

Care must be taken that the marks applied for are not deceptive and do not claim that the goods or services they relate to have any special coronavirus-related properties, unless they do, or are significantly offensive to public morals. In any event, new marks must adhere to the basic elements of what constitutes a trade mark: they must be distinctive inherently and be capable of distinguishing the goods or services of one trader from those of another.