The ongoing coronavirus pandemic has plunged the world into an unprecedented global crisis, as nations grapple to reign in the spread of the disease through government-imposed lockdowns and self-isolation measures. The effects of the virus, from both healthcare and economic perspectives, will be long-lasting and are likely to fundamentally alter the way we live our lives and conduct business.
While the situation may seem dire, it is heartening to remember the words of Albert Einstein who said "in the middle of every difficulty lies opportunity". With this statement in mind, it is perhaps unsurprising to find a recent surge in South African trade mark applications in respect of wide ranging healthcare and sanitary goods, as well as related healthcare and information services. Examples of such marks include DOC SAM'S SANITIZER, CORONA GUARD, CORONA CARE, VIRAL SANITIZER, VIROGOLD, VIROTIZER, and GERMSTOP. Such applications are to be warmly welcomed at a time when additional offerings in the healthcare sector, and consequent economic boosting effects, are sorely needed.
Viral trends (pun intended) repeatedly give rise to a rush of trade mark applications, as opportunistic applicants seek to secure registered rights and to benefit commercially from trending terms. The case of the coronavirus pandemic is no exception. Foreign trade mark registries have seen an increasing number of trade mark applications for marks including the words CORONAVIRUS and COVID 19. Given the serious worldwide health and economic consequences of the pandemic, many may view such applications as being particularly tasteless. A handful of such applications (there are many), include:
- Italian trade mark application no. 2020000023416 in classes 25 and 33 in relation to "clothing, footwear, headgear" and "alcoholic preparations for making beverages; alcoholic beverages (except beers)", respectively;
- American trade mark application no. 88783939 CORONAVIRUS SURVIVAL GUIDE in class 16 in relation to "magazines in the field of survival, protection, medicine and pandemics";
- Italian trade mark application no. 2020000025972 in class 25 in relation to, inter alia, "clothing, footwear and headgear";
- American trade mark application no. 88790444 in classes 9, 25 and 41 in relation to "perecorded audio cassettes featuring music and record albums; prerecorded audio tapes featuring music and record albums", "headwear; t-shirts" and "entertainment services in the nature of live vocal performances by a musical and vocal group", respectively;
- American trade mark application no. 88839789 MY CORONAVIRUS EXPERIENCE in class 38 in relation to "providing on-line facilities for real-time interaction with other computer users and electronic bulletin boards concerning topics of interest relating to customer and employment experiences during the pandemic in 2019-2020";
- American trade mark application no. 88830730 CoronaVirusRx in class 5 in relation to "hand-sanitizing preparations"; and
- Mexican trade mark application no. 2341574 CORONAVIRUS in class 32 in relation to "beers; non-alcoholic beverages".
From a South African trade mark law perspective, applications for marks including CORONAVIRUS and COVID 19 will be examined on both inherent and relative grounds. In respect of relative grounds, the usual tests as to confusing similarity in respect of sound, sense and appearance with prior applications and registrations, will apply.
Of greater interest are the potential inherent grounds of objection. First and foremost, are the terms CORONAVIRUS and COVID 19 capable of performing the essential trade mark function of distinguishing one trader's goods or services from those of others? The answer is almost certainly in the negative, and it is unlikely that any amount of use could render such terms capable of distinguishing given that they are widely used by innumerable third parties. In addition, some may view attempts to secure exclusivity in terms associated with a global healthcare catastrophe as being morally unsound. In this sense, trade mark applications for the terms CORONAVIRUS and COVID 19 in isolation could fall foul of the prohibition of marks that are deemed "contra bonos mores" (contrary to morality) or likely to give offence to any class of persons. In addition, such terms could be viewed as being words which consist exclusively of a sign or an indication which have become customary in the current language or bona fide and established practices of the trade. On the other hand, trade mark applications which incorporate the terms CORONAVIRUS or COVID 19 (for example CORONAVIRUS SURVIVAL GUIDE – a seemingly positive trade offering), may be permitted to proceed to registration subject to a disclaimer on the exclusive use of the relevant words. In this instance, rights will lie in the mark when viewed as a whole, and a trade mark proprietor could not object to another party's use of the disclaimed elements alone.
The takeaway is that would-be applicants for marks incorporating CORONAVIRUS or COVID-19 are strongly urged to seek professional advice before incurring costs associated with applications which may ultimately fall flat. Qualified trade mark attorneys are well-placed to advise on the risks associated with such applications, and to formulate sound filing strategies that will lead to ultimate success.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.