Since February 2020, the Covid-19 (also known as Coronavirus) pandemic has been the major talking point around the world and has resulted in many common words and phrases coming into existence. For instance, words like ‘Covid’, ‘Coronavirus’, ‘Self-isolation’, and ‘Patient-Zero’ are being widely used with reference to the pandemic. Consequently, such pandemic referenced words are being used as trademarks and are filed for registration at Trade Mark Registries worldwide. Since distinctiveness is one of the primary features that characterizes a trademark, individuals and companies seeking to use such marks are now caught in a race to get their marks registered. In this article, I have analyzed the various registrability issues pertaining with ‘Covid’ or ‘Corona’ referenced trademarks filed in India and other related issues that may pose difficulties in seeking the registration.
Corona/Covid related trademarks in India
As per the data available on the website of the Indian Trade Marks Registry, more than 150 ‘Corona’/ ‘Covid’ related trademarks have been filed in different classes post March 2020.
As expected, several pharmaceutical companies have filed trademark applications as they are developing medicines and vaccines to combat the virus. Majority of the applications have been filed on a proposed to be used basis and under Class 5 of the Nice Classification with respect to medicinal and pharmaceutical preparations. As per the Trade Marks Registry website, Glensmith Labs was the first company to file a pandemic referenced trademark ‘COVID-RELIEF’ on 5-03-2020. Bharat Biotech being one of the six companies working on the development of Covid vaccines was the next to file ‘COVIDAC’ (12-03-2020) and ‘COROFLU’ (19-03-2020) for their vaccines and medicinal preparations. Other early notable filings include ‘COVIDIUM’ by Swiss Garner Life Sciences filed on 13-03-2020 and ‘COVIDROXYL’ filed by Alkem Laboratories on 30-03-2020. Some of the other trademarks subsequently filed for medicinal and pharmaceutical preparations include ‘FAVICOVID 200’, ‘COVIDANG-D3’, ‘COROSHIELD’, etc.
It is interesting to note how some proprietors have strategically filed certain Covid/Corona referenced trademarks in other classes as well (Classes 3, 9, 10, 25, 28, 29, 30, 35 and 42) with the intention to create an impression that the goods and services sold under such trademarks may prevent consumers from contracting the virus. Few of the goods applied under such trademarks include sanitizers, cosmetics, bodywash, toilet cleaner, handwash, phenyl, soap, cleaning masks for the face, disinfectants, bleaching properties to be used for laundry purposes, polishing, scouring and abrasive preparations, masks, gloves, testing kits, diagnostic kits, and surgical apparatus - the list is endless. Apart from the above, few trademark filings have also been made for completely unrelated goods, for example, ‘COVID-19 MASK’ has been applied for laptop bags, computer bags, mobile phone cases, covers, etc. Similarly, few filings containing the term ‘CORONA’ have been made for clothing, footwear and peculiarly for mouth fresheners. Such filings indicate nothing but opportunistic marketing on the part of the proprietors who are trying to benefit from the situation.
Registrability of Corona/Covid related trademarks in India
As per Section 9 and 11 of the Trade Marks Act, 1999, a trademark application can be refused registration on either absolute or relative grounds, respectively.
Section 9(1)(a) of the Trade Marks Act – marks not capable of distinguishing the goods of one person from those of another
Section 9(1)(a) of the Trade Marks Act, 1999 states that no mark is registrable unless ‘it is distinctive and capable of distinguishing the goods or services of one person from those of another person’. The ability to distinguish the goods or services of one proprietor from those of others is an important aspect and requirement for registration of a trademark. Therefore, a trademark containing generic wordings lack such a character and are liable to be refused.
In current times, the term ‘Corona’/ ‘Covid’ has become a household word in India and any mark having identical/ similar wordings may be objected under Section 9(1)(a) of the Trade Marks Act, 1999.
Section 9(1)(b) of the Trademarks Act 1999 - Descriptive in nature
As per Section 9(1)(b) of the Trade Marks Act, 1999, a trademark consisting of marks or indications that may serve in trade to designate the characteristics of the goods or services shall not be allowed registration. Examples of such characteristics of the goods or services include kind, quality, quantity, intended purpose, values, geographical origin or the time of production of goods or rendering of the service or other characteristics of the goods or services. Thus, trademarks containing any pandemic referenced wording(s) applied for certain goods may be objected for having an indication towards the virus.
Section 9(2)(a) of the Trademarks Act 1999 - Likely to deceive the public or cause confusion
Section 9(2)(a) provides that any mark that creates deception or causes confusion in the minds of the public shall be denied registration. Considering the current situation, there is a strong likelihood that any trademark containing the term ‘Corona’ or ‘Covid’ or any deceptively similar mark may create confusion or deceive the public into believing that the goods or services provided under such marks provide cure or can be useful in providing protection from the virus, which in most cases may not be true.
For example, some proprietors have filed for trademarks containing the terms ‘Corona Preventive’ and ‘Corona Warrior’ for food items. Such trademarks may create an impression that the goods covered under them have dietic or therapeutic substances that may help in providing cure or protection from the virus. Further, such trademarks may not only create confusion in the minds of the public but also add on to the misinformation existing in the society. Besides, dietic supplements are governed by the Food Safety and Standards Act, 2006 and sale of products bearing such trademarks falls under the category of ‘misbranded food’ for having ‘false, misleading or deceptive claims’ and is a punishable offence. Likewise, of the use of similar trademarks for medicines and cosmetic products, may be in contravention of the Drugs and Cosmetics Act, 1940 for being sold as ‘misbranded drugs’ and ‘misbranded cosmetics’, respectively.
Section 11 of the Trade Marks Act 1999 - Objectionable in the light of marks already existing on the Register
There are many proprietors who have registered or applied for Corona/Covid formative marks in many classes prior to the outbreak of the virus. Section 11 of the Trade Marks Act, 1999 bars registration of identical/similar marks that may cause confusion in the mind of the public on the basis of an earlier existing trademark.
On a related note, it is also pertinent to mention that a proprietor may obtain rights over a trademark by being the first one to commercially use the trademark, even prior to registering the trademark. In such a case, industries that were allowed to or were able to operate in the early months of lockdown may get an advantage over the others who may not have been able to operate and thus commercially use their trademark. For instance, few companies have started sale of sanitizers[1], [2] and protective gears under pandemic referenced marks. Given, the government’s relaxed permission to distilleries and manufacturers for production of hand sanitizers to meet the increasing demand, it may be possible that multiple new proprietors may have started selling sanitizers under such marks without registration. This may lead to a surge in new filings and possible oppositions post the publications of such marks in the journals by the Trade Marks Registry.
Impact on the already registered trademarks and registered company names
As of today, approximately around 50-70 trademarks containing the term ‘Corona’/ ‘Covid’ or trademarks having visual or phonetic similarity to said words stand validly registered in different classes and over 50 company names containing the term ‘Corona’/ ‘Covid’ are registered in India across all states. But, given the stigma associated with the words, not all company owners would appreciate having a linkage to the virus and may thus opt for rebranding their names fearing future losses. A similar approach was adopted by Tata Motors when it renamed its car ‘ZICA’ to ‘TIAGO’ before its launch to avoid any connection with the ZIKA virus outbreak that took place in 2015. Another interesting point to ponder here would be regarding the fate of the marks that have already secured registration. It may be interesting to see whether such registered marks are cancelled on the grounds of loss of distinctiveness[3] or potential to cause confusion considering the change in situation. In normal circumstances, an action to cancel a registered trademark is initiated by an ‘aggrieved person’ under Section 57 of the Trade Marks Act 1999. Further, the Registry can also suo moto initiate cancellation proceedings against such registered trademarks under Section 57(4) of the Trade Marks Act 1999 read with Rule 100 of the Trade Marks Rules 2017. It would be interesting to see if f cancellation of trademarks having any ‘Corona’/ ‘Covid’ are taken up by the Registry.
Rise of fraud and phishing activities using Corona/Covid related domain names
Instances of fake coronavirus websites operating in India and worldwide have been in the news since March 2020. Delhi Police’s cybercrime unit on 25-03-2020 shared on Twitter a list of 13 different links[4] trying to scam in the name of coronavirus and cautioned users not to use the links. Further, India’s nodal cyber security agency, Indian Computer Emergency Response Team (CERT-In) on 21-06-2020 has warned everyone against an imminent cyber attack and have cautioned users to refrain from clicking on emails coming from a particular account ncov2019@gov.in with the subject line ‘Free COVID-19’ testing’[5]. Check Point Research, a global cyber threat intelligence provider while speaking to The Times of India confirmed that almost 20,000 new coronavirus related domains were registered globally including India in the first three weeks of May.[6] While some of them may be for legitimate purposes to be used by governments, individuals, and corporates, most of these domains are probably malicious that may have been created for the purposes of outright fraud and phishing. In another instance, within minutes of the announcement of The Prime Minister's Citizen Assistance and Relief in Emergency Situations Fund on 28-03-2020 for the coronavirus outbreak and similar pandemic like situations in the future, ‘half a dozen’ similar sounding websites were created such as ‘PM-care’ etc.[7]
Steps taken by other countries regarding examination of trademark filings related to the pandemic
United States of America
The USPTO vide an official notice[8] dated 15-06-2020 has announced that it will accept petitions to advance the initial examination for trademarks used to identify qualifying COVID-19 medical goods and services. To qualify for this new program, the applicant must apply for one or more medical goods that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19 or a medical service or medical research service for the prevention and/or treatment of COVID-19. Applicants who wish to avail this service are required to first file the application and then file a petition to the Director accompanied by an affidavit setting forth the Applicant’s COVID-19 medical goods or services and an explanation of why the goods or services qualify for prioritised examination.
China
The China National Intellectual Property Administration (“CNIPA”) has also taken prominent steps to take action against malicious filings related to the pandemic. CNIPA vide an official notice[9] dated 27 February 2020 formulated guidelines for the Examination of Epidemic Prevention and Control Related Trademarks.
In the same notice, CNIPA specifically mentioned filings with respect to Vulcan Mountain Hospital, Raytheon Mountain Hospital and Doctor LI Wenliang. The two hospitals were constructed in Wuhan in just weeks after the pandemic broke out in China and were frontline hospitals fighting the epidemic. Dr. Li was the first doctor to warn about the emergence of the novel virus back in December 2019, he later died after contracting the virus. The CNIPA said that registrations creating confusion with the above names may cause significant social adverse effects and will be rejected according to law. They also stated that up to 27-02-2020 they had exercised control over nearly 1,000 trademark registration applications related to the pandemic.
On 4-03-2020[10], the CNIPA published a detailed list of the 63 trademark applications rejected for being related to pandemic-related terms and on 5-03-2020[11] announced the rejection decisions against 37 ‘Li Wenliang’-related trademark applications.
By 18-03-2020[12], the CNIPA had rejected 328 trademark applications related to the pandemic.
Conclusion
In light of the above, now that the Indian Trade Marks Registry has slowly started to resume its operations after the nation-wide lockdown, it will be interesting to see if it also comes up with new guidelines for examination of similar pandemic referenced trademarks.
[The author is a Consultant in IPR practice in Lakshmikumaran & Sridharan, New Delhi]
[1] https://www.indiamart.com/proddetail/corosafe-hand-sanitizer-22152556048.html
[2] https://www.shopclues.com/alcorub-hand-sanitizer-100-ml-instantsanitizer-149395523.html
[3] Geekay Enterprises Vs.Hemant Haricharan Goel 2012(50)PTC 156(IPAB)
[4] https://www.theweek.in/news/india/2020/03/27/Beware-of-these-dangerous-coronavirus-websites-say-Delhi-Police.html
[5] https://economictimes.indiatimes.com/tech/internet/cyber-attacks-in-india-surge-since-lockdown/articleshow/76591994.cms
[6] https://timesofindia.indiatimes.com/india/4-lakh-corona-related-e-attacks-in-2-weeks/articleshow/75728726.cms
[7] https://economictimes.indiatimes.com/tech/internet/cyber-chiefs-warning-as-hackers-target-pms-covid-fund/articleshow/74877953.cms?from=mdr
[8] https://www.uspto.gov/sites/default/files/documents/TM-COVID-19-Prioritized-Examination.pdf
[9] http://sbj.cnipa.gov.cn/gzdt/202002/t20200227_312227.html
[10] http://sbj.cnipa.gov.cn/tzgg/202003/t20200304_312498.html
[11] http://sbj.cnipa.gov.cn/tzgg/202003/t20200305_312520.html
[12] https://www.hg.org/legal-articles/china-punishes-bad-faith-trademark-applications-regarding-coronavirus-55307
