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Intellectual Property

Is COVID-19 Your New Fortune?

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By Alisa Rajamalar

The whole world currently faces great uncertainty with an economic, social and political downturn resulting from the global pandemic wreaked by the novel coronavirus (COVID-19). However, some parties are seizing personal and economic opportunities that come with the terms related to the virus. The million-dollar question here is: Can “COVID” and “CORONAVIRUS” or any related terms be registered as a trademark? If the answer to this question is affirmative, which entity would be able to claim commercial benefits from the mark?

The fundamentals of trademark registration stem from the need to protect the rights of the true owner of a trademark or a brand. Following this, one would expect the terms “COVID” and “CORONAVIRUS” to be registered as a trademark by entities who claim to have devised or own these terms.

However, Trademark Offices around the world have seen a recent spate of trademark applications for the said terms. A quick search on the ASEAN Trademark Database reveals that such opportunistic trademark applications have also flooded the ASEAN Trademark Offices. Therefore, the question now is whether the said applications would succeed at its registration.

There are several obstacles standing in the way of a successful trademark application for these terms. Below are aspects of the trademark law that you may want to watch out for if you intend to register such controversial marks.

1. Descriptive Mark

The general rule is that a trademark should not be descriptive of the goods and/or services that it seeks to protect. This means that a trademark should not explain or indicate any characteristics of the goods or services, which also includes the quality or the intended purpose.

What about registering the marks “COVID” and “CORONAVIRUS” for goods and services that are unrelated to the pandemic?

Examples of recent applications obtained from the Indonesian Trademark Database include “CORONA” for ketchup and hand tools, and “COVID” for bath soaps, shampoo and lubricants. Additionally, the Thai Trademark Database shows a trademark application for the mark, “COVID-19” for clothing and likewise, the Philippine Trademark Database reveals a mark that contains the word “COVID” for environmental testing.

Would using the word “corona”, which means crown, garland or wreath in the Latin language, be considered non-descriptive in this case?

Applying the general rule to the above-mentioned scenario, where the goods and services do not directly describe the nature of CORONAVIRUS or COVID-19, most IP Offices may decide that the said objection will not apply.

However, the registrability of these marks would still be arguable as a generic word because of the extensive use of the word as a reference to the novel coronavirus. Therefore, granting trademark registrations to any entity to claim trademark rights to the generic term would impoverish the language and unfairly hamper competition.

2. Contrary to Public Interest, Morality, Interest of the Country

In terms of commerciality, these marks can conceivably be a good trademark as it references the virus, which is making headlines globally. Keep in mind that registering a trademark just because it is popular is not always a good choice as it may be detrimental to your business and your brand image.

In addition to that, registering trademarks with the intention to cash out from the pandemic can hardly be moral. While “COVID” for bath soaps, shampoo and lubricants, and “CORONA” for ketchup and hand tools are perhaps legally registrable, most IP Offices may be inclined to advise against the applications. This is in reference to the marks contradicting the public policy or accepted principles of morality as stated in the Trademark Law.

In conclusion, proper research must be done before registering marks to ensure that monetizing such controversial trademarks does not run afoul of any public policy or principle of morality. While the said terms have an undeniable pull and maybe commercially highly profitable, one ought to register such debatable marks at the peril that the mark could face negative market forces in which case consumers would be offended and refuse to buy the relevant products or services, which will eventually push the brand out of the market.

Perhaps the best due diligence would be to consult a trademark practitioner to advise and assist on one’s trademark choices and the trademark registration process. If you have any questions on this or any other IP matter, drop us a line at kass@kass.asia and we would be happy to help!

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