Coronavirus & Trade Mark Applications – A Legitimate Branding Opportunity Or Contrary To Public Policy & Morality

As it sweeps across the globe, novel coronavirus has bought not only distress and disruption but also a change in our day to day language, how we use it and what we understand words to mean.  For example, prior to February 2020, had you ever before used or heard the phrases ‘social distancing’ or ‘self-isolation?. If someone had said ‘lockdown’ to you, what would you have understood that to have meant?

Coronavirus themed trade mark applications

As the pandemic continues, the greater the traction these words and phrases gain in our daily lives. Consequently, a number of trade mark applications for ‘SOCIAL DISTANCING’ have recently been filed at the US Patent and Trade Mark Office. The goods and services for which registration is sought is diverse to say the least – from clothing to photography, stickers to beer, card games to CBD products.

At the time of writing, there’s no sign of any entrepreneurial soul applying to register ‘SOCIAL DISTANCING’ as a UK trade mark (but watch this space, as this is bound to change in the next few days).

There are, however, a number of pending applications at the UKIPO currently at the examination phase, for coronavirus themed applications. There are the obvious contenders:

• COVID 19;
• CORONAVIRUS;
• LOCKDOWN;
• PANDEMIC;
• COVID 19 RAPID TEST;
• CORONAVIRUS DEEP CLEANING SERVICES

But a number of applicants have shown a bit more creativity, such as KEEP CALM AND CORONAVIRUS ON, DIS-COVID, COVID 19 WARS.

Goods and services

What is particularly interesting are the types of goods and services for which registration is sought. These include cleaning chemicals, blood tests, PPE equipment – so far, so predictable.

However, as with the variations to the disease’s name, it has to be said that there’s been a fair amount of thought (or not enough, depending on your viewpoint) put into just what kind of products and services people might like to buy, labelled with the name of an incurable disease. For example, one of the applications includes make up, and another includes salad dressings. Coronavirus branded lipstick, anyone? No, I didn’t think so…

Registrability of coronavirus themed trade mark

Putting to one side the question of whether a coronavirus link makes for a commercially successful brand, the swathe of new filings raises a number of legal question as to the registrability of such trade marks, including, in some cases (not the lipstick and salad dressing examples) whether the brands are descriptive of the goods for which registration is sought, thereby precluding registration under section 5(1)(c) of the Trade Marks Act 1994.

However, in broader terms and perhaps of greater interest, is whether or not the UKIPO should allow these applications to proceed to publication, given that the applications might be perceived to be an attempt to capitalise on a global tragedy.

The Trade Marks Act 1994 requires that an application for registration be refused if the trade mark is contrary to either public policy or accepted principles of morality (section 5(3) Trade Marks Act 1994). Consideration under this ground does not factor in the goods/services for which registration is sought. The IPO will be concerned solely with the characteristics of the trade mark itself and not the conduct of the applicant.

So will principles of public policy or morality be used to defeat the applications?

Whilst each application will be judged on its merits, it seems to me that this would be unlikely.

Refusals on the basis of public policy tend to relate to marks that promote illegal drugs, counterfeiting, pornography or criminal activity whereas morality considerations require that a line be drawn between a mark that would justifiably cause outrage or censure, and those that might be considered to be distasteful.

In considering each application, the IPO will have to strike a balance between likely offence caused but also freedom of expression. If there is any doubt as to which of these competing interests prevails, freedom of expression will be the trump card for the applicant.

On that basis, I do not think that the marks will be refused because of public policy or morality considerations.

However, this isn’t to say that I think that all of these marks will proceed to publication. I’ve mentioned above that some of the applications may well fail as the marks are descriptive of the goods/services sought for registration (e.g. CORONAVIRUS DEEP CLEANING SERVICES for what appear to be chemicals used for cleaning).

In addition, those that do proceed to publication, may well still be vulnerable to opposition (and if registered, to cancellation) on the basis of bad faith, at which point considerations of whether the applicant genuinely intended at the date of the application to (for example) provide blood tests under the brand, or whether they wanted to stop someone else from registering the brand, will come into play.