This article was written by John Swinson, Karen Litherland and Tegan Camm.
While some were frantically stocking up on toilet paper and hand sanitiser when the news of the novel coronavirus COVID-19 broke, others were busy trying to capitalise on the outbreak. As of Monday 23 March 2020, over 20 applications have been filed by opportunistic applicants to register trade marks containing “COVID” or “CORONAVIRUS” in Australia, the United States and the United Kingdom.
These applications span a range of goods and services, from entertainment and television services to t-shirts. Some of the more egregious examples include:
- WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS (clothing);
- I HEART COVID-19 (athletic apparel); and
- COVID KIDS (shirts for children and adults, and internet advertising).
This is happening all across the world, even Australia. Mr Adams, a Queensland-based individual, recently filed an Australian trade mark application for “COVID-19” in respect of a broad range of entertainment, publishing and television services. The application has not yet been examined by the Trade Marks Office. Assuming Australia follows the pattern of other jurisdictions, we may see more applications filed by others in the coming weeks.
Has this happened before?
Yes - this is not the first time a worldwide event has led to an influx of trade mark applications.
After the Boston Marathon bombings in April 2013, 11 trade mark applications were filed in the United States containing “Boston Strong”, the popular hashtag and slogan created as an expression of Boston’s unity after the bombings. Ultimately, all of these marks were either rejected by the US Patent and Trademark Office or withdrawn.
In 2015, shortly after the Paris terrorist attacks that killed 12 people at the offices of the French satirical newspaper Charlie Hebdo, an Australian entity applied to register “Charlie Hebdo” and “jesuischarlie” for publishing services and apparel. “Je suis Charlie” was the slogan used in solidarity for the victims of the attacks and to promote free speech. These applications were eventually withdrawn by the applicant prior to examination by the Australian Trade Marks Office.
Can you actually trade mark COVID-19?
It depends – and each jurisdiction has different rules. In Australia, the Trade Marks Office must reject an application to register a trade mark in certain circumstances, including if the trade mark:
- is not capable of distinguishing the applicant’s goods or services from those of other persons;[i] or
- contains a sign that is scandalous or contrary to law.[ii]
Capable of distinguishing
In order for a COVID-19 related trade mark to be registered in Australia, the mark needs to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons. [iii]
The question of whether a trade mark is sufficiently distinctive is ordinarily assessed by reference to the specific goods and services claimed in the application. For example, “windows” may be descriptive of window design and manufacturing, but not of computer products or software.
Although it is a principle of trade mark law that people should not be deprived of their right to use everyday words and phrases, it is arguable that COVID-19 has no connection to, for example, apparel and entertainment services. Strictly speaking, COVID-19 may be capable of distinguishing these products or services from the goods or services of other traders. The same logic would not apply if an application was made for COVID-19 in respect of, for example, medical diagnostic services.
However, this is not an ordinary situation. It is possible that the Trade Marks Office will take the approach taken by the US Patent and Trademark Office in respect of the numerous Boston Strong applications[iv] – ie that use of COVID-19 has become so widespread that it could not possibly uniquely identify any applicant’s goods or services. However, this remains to be seen.
Scandalous or contrary to law
Signs that contain or consist of “scandalous” matter cannot be registered as a trade mark in Australia.
The term “scandalous” is not defined in the Trade Marks Act, so the Trade Marks Office will apply the dictionary meaning of the word (ie disgraceful to reputation; shameful or shocking). Whether something is “scandalous” is a matter of opinion, but it is sufficient if the mark offends a particular class of persons, rather than a majority of persons. Examples of scandalous marks include marks that contain obscene or coarse language (e.g. FUK M, FUCT or FCK), and marks that condone and/or promote violence or racism. [v]
Whether the Trade Marks Office will reject COVID-19 related marks as scandalous will depend on the mark in question. It is possible COVID-19 related marks will be considered in bad taste (which does not prevent registration), rather than scandalous (which is a relatively high bar). However, given that the World Health Organisation has declared the COVID-19 outbreak to be an emergency, the Trade Marks Office might be satisfied that this high bar has been met.
It can take up to 18 months for a trade mark application to be accepted by the Trade Marks Office and proceed to registration. Hopefully by that point, the COVID-19 outbreak will be a fading memory. It seems unlikely that any COVID-19 related trade mark applicant has plans to use the term for their nominated goods or services for an extended period of time (if at all). In these circumstances, there is little benefit in applying to register a trade mark at all.
[i] Trade Marks Act s 41.
[ii] Trade Marks Act ss 39 & 43.
[iii] Trade Marks Act s 41.
[iv] See Office Action 85906569 dated 12 July 2013.
[v] Trade Marks Office Manual of Practice & Procedure pt 30.