COVID-19 AND THE MARKS IT HAS LEFT

By Vikrant Rana and Hema Shekhawat

The COVID-19 pandemic has wreaked havoc globally and has deeply penetrated in all our lives, thereby compelling us to bring about a paradigm shift in the way we think, interact, perceive, work and live our daily lives. While it has impaired several lives globally, many have also explored this opportunity and curated their products, services as well as trademarks, company names and domain names focusing the COVID-19 and related terms. However, this is not the first time that trademark records have been flooded with marks based on any events or tragedies.

Also Read Rise in Corona/Covid trademarks around the world

Event trademarks

Event trademarks are trademarks that include terms or signs related to a sensational event. These marks are an attempt to capitalize on sensational events. For example, during the 2014 general election campaign, the catchphrase ‘NaMo’ gained popularity as an appealing nickname for the prime minister of the country. The PM’s history of working in a tea stall, inspired many to file trademark applications under class 30 including ‘NaMo Tea’ , ‘NaMo Chai’, ‘NaMo Cafe etc.

 

Also read The Prime Minister’s Brand rise of Trademark filing trend for NaMo related trademarks in India

Tragedy trademarks – some applications incorporate terms that are related to tragic events, these include terms such as 9/11, MH370, ‘Black lives matter’, ‘War on terror’ etc.

Also read Making a mark out of a Tragedy

 

Trademarks filed in the US related to Tragedies

Source : USPTO’S  Trademark Electronic Search System(TESS)

 

COVID-19 AND RELATED TRADEMARKS:

The Covid -19 pandemic led to filing of countless trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. Many companies tactically used COVID and Corona formative marks with an aim to convince the public that the product would be effective as protection against the virus. For example, an application for hand cleaners was made under the trademark ‘CORONA  SAFE : Antivirus Spray with Vitamin E’[1] Trademark applications were filed by proprietors in different classes of products including cosmetics, clothing, soaps etc.

Approximately 300+ trademark applications have been filed with the Indian Trademark Registry since the onset of the global pandemic last year. Some of these terms are descriptive of the pandemic itself, while others are phrases that became trending during the pandemic through hashtags and posts on various social media platforms such as #staysafe #quarantine etc.. It is interesting to note that the first wave of COVID-19 was recorded during the last week of March 2020, while the earliest Covid related trademark applications were filed in India from February 2020 onwards itself.

 

 

 

GLOBAL FILING TRENDS

As per the WIPO Global Brand Database more than 1,125 trademark applications have been filed till date[2] by companies around the world using the term ‘COVID’ in their trademark applications. Moreover 750+ filings have been made by companies around the world with the term ‘CORONA” in their trademark applications since January, 2020. One of the earliest applications using the term “covid” was filed in the USPTO- “together we survived covid-19” under class 25 on March 09, 2020  (Application #88827109)”

Also read

USAGE OF THE TERM ‘COVID’ IN TRADEMARK APPLICATIONS

 

Source : WIPO Global Brand Database

 

USE OF ‘COVID’ TRADEMARK GLOBALLY

Source : WIPO Global Brand Database

 

COVID RELATED TRADEMARKS- DATA ANALYSIS

Source: Indian Trademark Registry Records as on June 30, 2021

 

TIMELINE OF COVID APPLICATIONS- INDIA

The below graph is a pictorial representation of timeline of filing of COVID related trademark applications in India until June 30, 2021. The graph reflects the behavioral response of companies towards the popularity of any term in use at a specific period or phase. The graph shows minimal filing during January and February, 2020 and then the filing is seen at peak during June, 2020 when the first wave of COVID-19 was also at its peak and people were hoarding and incessantly using products and goods to keep the virus away.

Source : Indian Trademark Registry as June 30, 2021

 

The earlier set of trademark applications related to ‘COVID’ & ‘Corona’ filed before the Indian Trade Mark Registry include:

Anticipatory applications from November, 2020

Several major pharmaceutical firms also made anticipatory applications before WIPO for trademarks that may be used by them for vaccine marketing. For instance, the Serum Institute of India filed COVID related marks for vaccine under class 5 as early as November 20, 2020.

 

 

 

Similarly, pharmaceutical company, Bharat Biotech International Ltd. filed the mark COVIVAC for vaccine in class 5 as early as March 12, 2020.

 

Possible obstacles while registering COVID related trademarks

Although many trademark applications have been filed under several classes since the outbreak of the pandemic in India and across the world, the registration of these applications seem unlikely in view of below mentioned grounds:

1. Descriptive Mark One of the grounds under which medicinal or pharmaceutical products could be rejected could be that the mark is ‘descriptive’. Section 9 of the Trademarks Act, 1999 provides, ‘lack of distinctiveness’ as an absolute ground for refusal of registration.  Considering that COVID-19 is a worldwide pandemic, if the sign consists solely of “coronavirus” and “COVID-19” (alone or combined with a descriptive term) covering medicines, medical equipment, and services, the IP Office may in all possibility consider the trademark devoid of distinctive character and refuse the application.

 

In China, the Trade Marks Office issued the Guidelines for the Examination of Epidemic Prevention and Control-Related Trademarks on February 27, 2020 while quoting Article 10 of the Chinese Trade Marks Law which states that signs which are ’ detrimental to socialist ethics or customs, or [have] other unwholesome influences’ cannot be registered. In accordance with these guidelines the Chinese Trade Marks Office had rejected around 300+ applications which contained terms relating to Covid-19 by mid-March[1].

 

2. Likelihood of registration of Covid-19 Trademarks for unrelated goods and services

It is however, possible that trademark applications containing ‘COVID-19’ related terms for products that are not directly pandemic related may be accepted within the group of arbitrary trademarks. For example: The application for a board game called ‘Corona Yuga’ (Application no. 4491856 in class 28) might be accepted for its arbitrary usage.

 

 

Also read Copycat Covid-19 Products- New Face of Counterfeit

COVID RELATED COMPANY NAMES

It is indeed interesting to see that even companies have registered their names with the MCA comprising of terms like Corona, Covid-19, Pandemic and even quarantine.

 

COVID RELATED DOMAIN NAMES

The COVID-19 pandemic saw a spike in the number of fraudulent domain name registrations and illegal websites, specifically after the announcement of large scale vaccination drives all around the world. These websites bait internet customers through the usage of common Covid-19 associated terms in their domain names.

Figure 1. 2020 cumulative pandemic-related* global domain registrations. *Search terms: covid, corona, korona, kovid, pandemic, virus, wuhan. Exclusions: coronary, coronado. Source: MarkMonitor.

 

Source : https://timesofindia.indiatimes.com/india/4-lakh-corona-related-e-attacks-in-2-weeks/articleshow/75728726.cms

Also read TYPOSCAMS! PHISHING! TYPOSQUATTING in light of COVID-19 – Watch what you read!

CASES PERTAINING TO COVID-19 RELATED TRADEMARKS

Cutis Biotech v Serum Institute of India : [1]

Recently, Cutis Biotech had filed a passing off suit with the High Court of Bombay against the Serum Institute for use of the mark ‘Covishield’ which the company had been using for vaccines manufactured by it.

Covered in detail here to know more about bombay HC covishield trademark serum institute.

The Trademark tussle in this case revolved around the trademark “COVISHIELD”, wherein both the Appellant and the Respondent had applied for registration of the impugned trademark and both the applications were pending registration.

Cutis, i.e. the Appellant had claimed that it had coined the term ‘Covishield’ for the production of pharmaceuticals earlier to the trademark application filed by the Serum Institute for the mark on June 06, 2020 vide Application No. 4522244 for vaccine under Class-5.

However, Serum Institute i.e. the Respondent contented that the use of the mark by it was genuine as the Union Health Minister had also made a statement on April 25, 2020 with respect to trials for coronavirus vaccine at Serum Institute and pursuant to it, Serum Institute received virus seed, and cell bank from Oxford University and permission was granted by DCGI and it was only after that i.e. on June 06, 2020, that the Respondent applied for registration of ‘Covishield’ trademark.

The Court after hearing both the parties, rejected the Cutis’ plea that Serum Institute had failed to sufficiently prove the existence of its goodwill with respect to its products bearing the ‘Covishield’ mark. The Appellant’s plea about likelihood of deception between both the marks and acquired goodwill and reputation also could not stand in front of the Court. The Court while elucidating on the contention of likelihood of deception between the marks was of the view that in the present case there was no likelihood of confusion between the products of both the parties as the vaccine ‘Covishield’ produced by Respondent was not available across the counter and would be administered through Government agencies only. Hence, the buyer of the product ‘Covishield’ of Respondent was the Government of India.

Furthermore, the Court while dismissing Cutis’ plea in the case made a noteworthy observation that the vaccine is a preventive medicine for COVID-19 and a step towards controlling the pandemic and that a restraint order that will prevent the Defendant from using the trademark ‘Covishield’and distributing this vaccine under the said trademark would bring great hardship to the people to identify the product of Defendant.

Hence, the Bombay High Court endeavoured to serve public interests while securing the IP rights of the right owner in the case.

Conclusion

Trademark, domain names, company names etc. are creative opportunities for enterprises to get public attention and gain popularity. Hence, one can observe many applications that attempt to take advantage of such sensational events. Applicants or owners who have tactically used COVID and Corona formative marks seek to financially exploit the impact of the pandemic. Although this practice seems harmless, it must be considered that baseless applications would not only deceive the public but also hurt possible legitimate users.