6 Jul 2020

The UK and EU Intellectual Property Offices have seen a number of new applications filed over the last few months for various COVID-19 trade marks. We’ve taken a brief look at some of the new filings below, and how the registries may deal with these.

Medical Goods and Services

Unsurprisingly, a number of the applications cover medical and sanitary goods and services. For example:

  • EUTM Application for CORONA VIRUS FREE (stylised) covering “clothing, headgear and footwear, braces and supports, for medical purposes” amongst others.
  • UK Trade Mark Application for COVID covering “hand cleaner; hand cleaners [hand cleaning preparations]”.
  • EUTM Application for MASK COVID (stylised) covering “surgical, medical, dental and veterinary devices and instruments”, “respiratory masks for artificial respiration” and “medical services” amongst others.
  • EUTM Application for COVID MANAGER covering “medical test equipment” and tracking services amongst others.
  • EUTM Application for COVID FREE covering “sanitary preparations and articles”, “extermination, disinfection and pest control” amongst others.
  • EUTM Application for COVID-19 RAPID TEST covering “Blood testing apparatus; Apparatus for carrying-out diagnostic tests for medical purposes; Diagnostic apparatus for medical purposes; Medical diagnostic apparatus for medical purposes”.

The main purpose of a trade mark is to act as a badge of origin, enabling the public to identify the source of the goods and services offered under this. COVID, COVID-19 and Coronavirus have quickly become part of our everyday language, and are not exclusively associated with any one entity, particularly when used for medical or sanitary related goods and services.

Given this, many of the above just don’t do the job of being a trade mark. As a result, they are likely to face various refusals on the grounds of lack of distinctiveness. The registries can also refuse applications where the mark applied for has “become customary in the current language”, something which may also be cited here.

As a final point, the registries may additionally look to refuse the applications on policy grounds. They can do this where they consider the mark applied for to be “contrary to public policy or accepted principles of morality” or where it is of such a nature to “deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)”.

Merchandise

There have also been various filings covering merchandise-type goods. To mention a few:

  • UK Trade Mark Application for KEEP CALM AND CORONA-VIRUS ON covering “holdalls for sports clothing”, “clothing”, “articles of clothing for toys” and associated advertising, retail and design services.
  • UK Trade Mark Application for COVID-19 covering “game boards for trading card games”.
  • UK Trade Mark Application for COVID WARS covering “clothing, footwear, headgear” and “games and playthings” amongst other goods and services.

These applications are again likely to fall foul of the distinctiveness requirements, and policy reasons may be cited too.

The More Unusual…

We may be looking forward to popping down to the pub or going out for a meal again, but would you want to go to a restaurant called “COVID-19”? Several new applications cover a range of more unusual goods and services, from food and drink offerings, through to accommodation and entertainment services.

It looks like some of the marks may be used to suggest an environment is ‘free’ from the virus. However, there appears to be some confusion over the services covered, as applying to register a mark for “provision of food and drink” suggests an actual food and drink offering under this, as opposed to certification type services. Even those applications that do cover certification services or similar are likely to face problems since, besides potential policy reasons, they simply do not function as a trade mark where there is no distinctive element.

Other pending applications include:

  • EUTM Application for CORONAVIRUS covering “essential oils and aromatic extracts”, “beers and their derivatives” and “alcoholic beverages (except beers)”.
  • EUTM Application for COVID covering “locks”, “goods of plastic” and “windows and doors”.
  • UK Trade Mark Application for COVID-19 covering “cookware” and various household goods.

Given the nature of the goods and services covered by these applications, they arguably don’t fit quite so neatly within the non-distinctive category. However, other grounds of refusal may well apply – particularly policy grounds – and it will be interesting to see just how the registries handle the applications in this category.

Conclusion

It seems probable all of the applications above are likely to face some level of refusal from the registries, which once raised will be difficult to overcome.

Even if an application does sneak through to registration, enforcing one of these marks is likely to be near impossible. The terms COVID, COVID-19 and Coronavirus have unfortunately now become part of the daily fabric of our life, and ultimately the registries are likely to decide that these are free for all to use, and should and cannot be monopolised.

For more information about registering trade marks and the potential restrictions, please get in touch.