Coronavirus as a Trademark: Monetising the Pandemic
Written by Deeksha Singh
Research Associate at Law & Order (July-Aug 2020)
Fifth Year, BA. LLB. Symbiosis Law School, Pune
Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order
Introduction
‘Corona’ or ‘Coronavirus’ has become one of the most commonly talked about terms today. With the first signs of the virus emerging around December, 2019, it has now been nine months since then and five since it has been declared as a pandemic by the World Health Organisation in March, 2020.[1] The pandemic has brought a huge change not just in our normal way of life, but has also embarked a drastic change upon the functioning of industries and companies. There have been instances of industries facing losses and even shutting down their businesses.
Yet, there are some businesses which have given a deep thought on how to monetise or capitalize upon this global catastrophe of the Coronavirus. Whereas some companies have profited from mass-producing and selling hand-sanitizers, others have profited from the sale of face masks, with some companies bringing out fashionably designed masks for those who want to stay fancy during the pandemic.[2]
However, the recent trend we are seeing all over the world is for companies and individuals to capitalize upon the name of the virus by seeking to trademark various ‘corona’-related names and phrases.
This article tries to highlight the futility of registering such marks as trademarks and analyses on what basis such marks would most likely be rejected by the courts.
What can be Trademarked?
According to Section 2(zb) of Trade Marks Act, 1999, “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors”.[3] One of the important points to be kept in mind while filing a trademark application for registration of the mark is that the Trademark is aimed to protect the consumer so that when they purchase something from a particular brand they need not to compromise on the quality of the product and be able to distinguish it from other brands. The right of Trademark is provided for the use of marks for identifying the origin of particular goods or services.[4]
Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for refusing the registration of a trademark.[5] On the other hand, Section 11 mentions the relative grounds of refusal.[6] The law protects goods and services, however, there are some marks which cannot be protected. These include descriptive names, generic names, deceptive names, immoral words, government symbols.
In Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd,[7] the Applicant wanted to trademark the name “Krishna” for ghee and milk products. However, the Delhi High Court held in this landmark case that the name of a God cannot be trademarked. The Court stated that the name “Krishna was as common as John in the West”. Further, the Court also held that as the deity himself is associated with the goods which the applicant sells, i.e. ghee and milk products. Thus, granting protection to the name ‘Krishna’ would be the same as granting protection to a descriptive expression.
Therefore, we understand that marks which are descriptive in nature, i.e., marks which describe what the product is in its name itself; or marks which are generic, i.e. marks which point to a general class or group of a thing, cannot be granted protection under Trademark law.
Can Coronavirus/ Pandemic related words be trademarked?
Before the pandemic, the term ‘Corona’ was not associated with a tragedy and was positively used by many companies.
The term ‘Corona’ came in the 16th Century and means ‘crown’ in Latin.[8]
The term was trademarked by big businesses such as Toyota for its car called ‘TOYOTO CORONA’, which used to be popular in the 1950s, with the production of the car being ended in 2001.[9] Another example is of Huawei Technologies, which got the EU trademark for ‘HUAWEI CORONA’ with respect to mobile telephones and computer software in 2011.[10] Before the pandemic, perhaps the only ‘Corona’ we were all familiar with was of the Mexican beer brand, Corona, which is also a registered trademark.
Today, the situation has become such that the term ‘corona’ only reminds the public of the virus, SARS CoV-2 (Novel Coronavirus).
As mentioned above, companies have tried to increase their business even during the pandemic by capitalizing on the name of the virus itself. Hence, applications such as ‘Coronil’, ‘Corobaby’, ‘FXCK COVID-19’, ‘I survived Corona Virus’, etc. have been filed by companies in classes not just related to pharmaceuticals but others such as for computer softwares, clothing, entertainment, etc.[11]
In India, even before the nation-wide lockdown was enforced, there were many applications for seeking trademark protection for the terms ‘COVID- 19’ or ‘Corona’. While most of the applications were from the pharmaceutical industry, surprisingly, other applications were made for computer anti-virus products, clothing brands and even for music albums.[12] Such applications have also been filed globally in nations such as the US, UK, and China. However, we need to understand to what extent such marks can be granted trademark registration.
However, such marks can create confusion in the mind of consumers as they might associate such brands with the Coronavirus, which is one of the reasons why the Mexican beer, Corona, faced both criticism and losses since the beginning of the pandemic, mostly due to the false association of the virus being caused due to drinking the beer.[13]
Most of the corona-related applications are those which are descriptive in nature or generic in nature, while some, such as ‘CORONAVIRUS: MADE IN CHINA’, just come off as provocative and racist in nature.
Marks such as “I (heart) CORONA” or COVID-19 INFECTED are just distasteful in nature.[14]
There are various companies which are now trying to trademark ‘Coronavirus’ by just twisting the words a little or adding another word to it to change the nature or meaning of the word. Marks such as Patanjali’s ‘Coronil’[15] are an example of this. Terms like these are deceptive in nature and the same can be a ground for refusal of registration under Section 9 of the Indian Trademark Act, 1999.
According to Section 9(2)(a) of the 1999 Act, marks which are of such a nature as to deceive the public shall not be registered.[16] Thus, for example, marks such as ‘NOCORONA’, ‘COVID-RELIEF’, ‘CORONA SAFE’, etc. are bound to be refused registration as they convey the false likelihood that the product would somehow protect a person from the Coronavirus.
Some countries make it difficult to file applications or to be granted trademark registration for such generic and descriptive marks. For example, under the Chinese Trademark Law (CTML), Article 10 was amended last year which now includes several grounds for refusal to trademark registration.[17] Article 10.1.8 prevents registration of signs which are ‘detrimental to socialist ethics or customs, or have other unwholesome influences’. During the pandemic, this provision has been imposed in several cases to refuse registration of Coronavirus-related trademark applications. Until mid-March, 2020, the Chinese Trademark Office had rejected more than 300 Corona-related trademark applications.[18]
Conclusion
It is important to understand the motivation of the company seeking to trademark a term related to or using ‘corona’. This is because a corona-related mark may make perfect sense for a pharmaceutical company to trademark as the name of a drug made to combat the virus, but for other companies, the effort to trademark such a name may only be a greedy motive to monetise the pandemic.
The term ‘Corona’ had a different meaning before the pandemic and is now associated with the novel coronavirus. It has thus become a very generic and descriptive term. The name of the virus has now become a part of our daily vocabulary.
Such marks also do not help further the main aim of trademarks – that of identifying the source or origin of a good or service.
Corona, COVID-19 and other related marks are thus likely to be rejected and end up being a waste of time and money.
[1] Coronavirus confirmed as pandemic by World Health Organization, BBC News (March 11, 2020), https://www.bbc.com/news/world-51839944. [2] Mugdha Variyar, What's in a name? Coronavirus-related trademark applications pour in, CNBC TV 18 (April 09, 2020), https://www.cnbctv18.com/legal/whats-in-a-name-coronavirus-related-trademark-applications-pour-in-5651471.htm. [3] Section 2(zb), Trade Marks Act, 1999. [4] SS Rana & Co., Trademark rights and protection in India, Lexology (March 1, 2018), https://www.lexology.com/library/detail.aspx?g=51704e3b-5ebb-4dad-852f-991d02a0c1a7. [5] Section 9, Trade Marks Act, 1999. [6] Section 11, Trade Marks Act, 1999. [7] 2011 (48) PTC 235 (Del.). [8] Corona, Dictionary.com, https://www.dictionary.com/browse/corona. [9] Parth Gohil, The Times When Corona Was Just A Toyota, MotorBeam (March 08, 2020), https://www.motorbeam.com/toyota-corona-when-corona-was-just-a-toyota/. [10] Huawei Corona, Trademark Elite, https://www.trademarkelite.com/europe/trademark/trademark-detail/009826975/HUAWEI-Corona. [11] Vikrant Rana , Bijit Das, Shubhankar Shashikant, The Rise Of The Corona/Covid Brands Around The World, Mondaq (May 15, 2020), https://www.mondaq.com/india/trademark/934256/the-rise-of-the-coronacovid-brands-around-the-world. [12] Josh GerbenA Comprehensive List of Coronavirus-Related Trademark Filings, Gerben Law, https://www.gerbenlaw.com/blog/a-comprehensive-list-of-coronavirus-related-trademark-filings/. [13] Aimee Ortiz, Corona Beer to Halt Production Amid Coronavirus Outbreak, The New York Times (April 03, 2020), https://www.nytimes.com/2020/04/03/business/coronavirus-corona-beer.html. [14] Thoughts on Applying to Register Trademarks for COVID, CORONAVIRUS, and CORONA, Stradley Ronon (April 01, 2020), https://www.stradley.com/insights/publications/2020/04/ip-newsflash-april-1-2020. [15] PTI, Madras HC restraint on Patanjali’s use of trademark ‘Coronil’, The Hindu (July 18, 2020), https://www.thehindu.com/news/national/madras-hc-restraint-on-patanjalis-use-of-trademark-coronil/article32120507.ece. [16] Section 9(2)(a), Trade Marks Act, 1999. [17] Tian Lu, China says ‘No’ to the malicious filing of Coronavirus-related trade marks, The IP Kat (March 28, 2020), http://ipkitten.blogspot.com/2020/03/china-says-no-to-malicious-filing-of.html. [18] Rebecca Anderson-Smith, Countering the inevitable flood of covid-19 trademark applications, World Trademark Review (April 17, 2020), https://www.worldtrademarkreview.com/coronavirus/countering-the-inevitable-flood-of-covid-19-trademark-applications. BIBLIOGRAPHY
Coronavirus confirmed as pandemic by World Health Organization, BBC News (March 11, 2020), https://www.bbc.com/news/world-51839944.
Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd, 2011 (48) PTC 235 (Del.).
SS Rana & Co., Trademark rights and protection in India, Lexology (March 1, 2018), https://www.lexology.com/library/detail.aspx?g=51704e3b-5ebb-4dad-852f-991d02a0c1a7.
Corona, Dictionary.com, https://www.dictionary.com/browse/corona.
Parth Gohil, The Times When Corona Was Just A Toyota, MotorBeam (March 08, 2020), https://www.motorbeam.com/toyota-corona-when-corona-was-just-a-toyota/.
Huawei Corona, Trademark Elite, https://www.trademarkelite.com/europe/trademark/trademark-detail/009826975/HUAWEI-Corona.
Vikrant Rana , Bijit Das, Shubhankar Shashikant, The Rise Of The Corona/Covid Brands Around The World, Mondaq (May 15, 2020), https://www.mondaq.com/india/trademark/934256/the-rise-of-the-coronacovid-brands-around-the-world.
Josh Gerben: A Comprehensive List of Coronavirus-Related Trademark Filings, Gerben Law, https://www.gerbenlaw.com/blog/a-comprehensive-list-of-coronavirus-related-trademark-filings/.
Thoughts on Applying to Register Trademarks for COVID, CORONAVIRUS, and CORONA, Stradley Ronon (April 01, 2020), https://www.stradley.com/insights/publications/2020/04/ip-newsflash-april-1-2020.
PTI, Madras HC restraint on Patanjali’s use of trademark ‘Coronil’, The Hindu (July 18, 2020), https://www.thehindu.com/news/national/madras-hc-restraint-on-patanjalis-use-of-trademark-coronil/article32120507.ece.
Aimee Ortiz, Corona Beer to Halt Production Amid Coronavirus Outbreak, The New York Times (April 03, 2020), https://www.nytimes.com/2020/04/03/business/coronavirus-corona-beer.html.
Tian Lu, China says ‘No’ to the malicious filing of Coronavirus-related trade marks, The IPKat (March 28, 2020), http://ipkitten.blogspot.com/2020/03/china-says-no-to-malicious-filing-of.html.
Rebecca Anderson-Smith, Countering the inevitable flood of COVID-19 trademark applications, World Trademark Review (April 17, 2020), https://www.worldtrademarkreview.com/coronavirus/countering-the-inevitable-flood-of-covid-19-trademark-applications.