While at first glance this may seem like a good chance to strike when the iron is hot, registering the words ‘Covid’ or ‘Covid Kill’, ‘Covid Check’, ‘Corona’, etc. as a trademark faces several hurdles and rightly so: the trademark may not be distinctive and maybe considered immoral.
Profiting from tragedies is frowned upon but is not completely unheard of. While big companies try to benefit from overall unpleasant (if not disastrous) situations, sometimes such acts are tasteless enough to leave one wondering: “who thought this was a good idea to begin with?”
Attempts for the Trademark ‘COVID’
In India, since the government reported the first confirmed case of an acute respiratory disease (which is a symptom of Covid-19) in January, the Trademarks Office (TMO) has seen a surge in trademark applications containing with the word “Covid”, “Covid Kill”, “Covid Check”, etc. related to the virus, although a good deal of these bear uplifting connotations (one of them already saying “Covid Clean”). The TMO has in fact not issued any statement pertaining to these trademark applications. However, these applications certainly can be considered insensitive as the pandemic is still gripping the world.
But will the law allow such a trademark to be registered?
Can ‘COVID’ Trademarks be Distinctive?
For a trademark to be registered in India, it has to be inherently distinctive. It must indicate the origin of the good/service, thereby preventing consumer confusion. A mark, if it is used for related or descriptive goods/services, ceases to be inherently distinctive unless additional matter is shown. It is very unlikely for such a mark to be granted registration as it merely describes an attribute feature, end result or use of the product. However, what is initially a descriptive mark may later become protectable as a trademark if it is shown to have acquired secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product/service. As has been held by jurisprudence, the level of scrutiny for a mark is much higher for pharmaceuticals or health related goods/services, given the dangers involved.
Another hurdle in India in registration of a trademark is that the applicant must show that they have bona- fide intent to use the proposed mark for a particular set of goods or services. This is so since the Indian trademark law reflects a first-to-use and not a first-to-file system.
Contrary to Public Morality or Good Faith?
Another ground of refusal of a trademark is when it is contrary to public order and/or morality. This would include applications that are in bad taste and unethical, especially in the context of the current situation of the world. In the same vein, the Intellectual Property administrations in many countries have released examination guidelines to address the filings of marks that would be considered malicious, based on morality concerns, relating to the Covid-19 pandemic. These concerns cover marks containing the names of people involved in the epidemic, marks related to the epidemic virus and disease, marks related to epidemic-related drugs, marks for protective and preventive products, and other marks related to the epidemic.
Refusal of trademark on the basis of lack of inherent distinctiveness and/or public morality concerns are well established principles of trademark law, which would be apparent to those who did not rush to be first-to-file. So in case you are still thinking of filing an application on “Covid”, “Covid Queen”, “Covid-Check” “Covid Cure”, “Covid Kill” and the likes thereof, take my word for it and just, don’t. However, how the Indian Trademarks Office reacts to such applications, remains to be seen.
Sumit Rajput is an advocate practicing in the Delhi High Court.Disclaimer: The views or opinions expressed are solely of the author.