Tue 21st Apr 2020

COVID-19® trade marks – Really?

Sometimes you expect something to happen, but it still surprises you when it does occur.

COVID-19 is the scientific term for the infectious disease, caused by the most recently discovered version of the coronavirus, which has been spreading worldwide for a couple of months now. It has become a synonym for death, overcrowded hospitals, economic disaster and businesses on the verge of extinction, as well as a severe limitation of our personal freedom.

 

So why would anyone apply to register the term COVID-19 as a trade mark? And for what product or service?

 

It is not likely that there will be products coming onto the market branded COVID-19, but it is likely that we will see products which use COVID-19 wording used in some form of slogan (such as “COVID-19 SURVIVOR”).

 

According to Oliver Spies, trade mark attorney at Page White and Farrer in Munich, ‘There have already been many such trade mark applications in the EU, and many more worldwide, all filed in 2020.’

 

Click here to download a list of applications as at 15 April 2020.

 

While some of these will have been registered for genuine purposes, others are being filed by opportunists, and these opportunistic trade marks will mostly be used for the purposes of sending warning letters based on rights in a registered trade mark.

 

This happened in the ‘Black Friday’ case in Germany, where someone registered ‘Black Friday’ as a trade mark to proceed against stores that promoted the sales which used this term.

 

Typical addressees will be clothing companies that advertise T-Shirts with COVID-19 slogans, or businesses that offer pharmaceutical or dietetic products to strengthen your immune system against the COVID-19 disease, using the wording to promote their products.

 

‘As intellectual property lawyers, we have to deal with opportunistic trade marks and companies riding the system on a regular basis,’ explains Oliver. ‘We know how to argue on behalf of a client who wishes to use the term in a genuine way.’

 

‘Still, in these troublesome times which affect all of us, does one really have to exploit these legal mechanisms with the name of this terrible disease?

 

Up to now, none of these trade mark registrations seems to have been accepted by the intellectual property offices.

 

The German Trademark Act provides that trade marks shall not be registered which are contrary to public policy or to accepted principles of morality, and such provisions exist in most jurisdictions.

 

Hopefully, trade mark examiners will refuse the applications ex officio and save the time and money of defending against morally questionable claims based on rights to the term COVID-19.

 

How we can help

We can advise you on any aspect of trade mark registration or brand protection. Call Oliver Spies in Munich on +49 89 51 505 800 or email oliver.spies@pagewhite.com.

 

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in April 2020.

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