We’re pleased to bring to you an interesting and pertinent post by our intern, Bhavik Shukla, analysing the trademark related issues thrown up by the COVID-19 pandemic. Bhavik is a 5th year student at NLIU, Bhopal.
Corona and Trademarks: Opportunistic Marketing or Unhealthy Opportunism?
The COVID-19 pandemic has wreaked havoc across the world, with countries constantly battling to prevent new infections and cure the existing ones. Even in such economically and socially constipated times, some people try to make the most of the situation. For example, some applications have been filed before the Registrar of Companies for names containing ‘COVID’. Similarly, news of a spike in online frauds and sale of necessities at higher prices is commonplace. Though many such corona/ COVID-19 related issues can exist (such as “I survived Covid-19” t-shirts), I shall focus primarily on trademark issues related to public health/safety in this post.
Registration of ‘Coronavirus’ and ‘COVID-19’ related marks
The recent past has seen several applicants filing trademark applications for ‘Coronavirus’ and ‘COVID’ related marks. Expectedly, there are applications which have been filed under Class 5 pertaining to medical pharmaceuticals, and veterinary products (as many of you may know, trademark applications are filed in ‘classes’ which indicate the categorization of the goods or services that the mark is being applied for – click here for full description of each class). More befuddling are applications filed under certain other classes, like the application for the mark ‘Corona Safe’ filed under Class 3 for ‘smoothing face masks’ and ‘cleaning masks for face’ in addition to ‘hand cleaners’ and other goods. Another application which seems like a poor attempt at executing a joke on the situation is for the mark ‘Corona’ under Class 9 in respect of a ‘computer anti-virus software.’ Unsurprisingly, none of the applicants have started using the marks (from what I can tell at least) and it is very possible that some of them might not even have the intention to use it in the future. China has in recent times cracked down on the malicious filing of ‘COVID-19’ trademarks through its amended law. Even though we don’t have a strict provision aimed at such marks in India, I argue below that that applications for corona/covid related trademarks will most likely be refused by the Registry under Section 9 of the Trade Marks Act, 1999 (‘Act’), which deals with absolute grounds of refusal for registration.
Potential to deceive the public
Section 9(2)(a) of the Act provides that “a mark shall not be registered as a trade mark if it is of such nature as to deceive the public or cause confusion“. This provision aims to prevent registration of marks which cause deception or confusion among the public. As of now, the best response that healthcare experts and governments have had to the virus is ‘social distancing’. In such times, when a cocktail of medicines are being tested with the hope of treating patients, it is astonishing that certain proprietors have sought registration for marks like ‘COVID-RELIEF’, ‘NOCORONA’ and ‘DHL CORONAVIRUS PREVENTIVE’.
Take for example, the mark ‘NOCORONA’ for an umbrella of goods like ‘pharmaceuticals’, ‘medical and veterinary preparation’ and ‘sanitary preparation for medicinal purposes’. An average customer using the products might very well believe that the medical preparation prevents the onset of or cures COVID-19, especially in times of abundance of misinformation about the virus’s prevention or cure. Considering that the WHO is still organising mega-trials to determine what treatments work for Corona, it is highly improbable that the goods sold under ‘NOCORONA’ or similar marks actually present a determinative cure to the virus. In that light, such marks can very well ‘deceive’ the public into believing that the products sold under them are effective, when in reality they may not actually be. However, preventive steps like the use of sanitizers are effective in the fight against COVID-19, and I shall address that argument under the next heading.
The Draft Trade Marks Manual, 2015, which offers guidance on the application of the Act, states that Section 9(2)(a) may be attracted even in cases where there is ‘misrepresentation as to the characteristics of the goods or services’. In light of the discussion above, the implied assurance of products under the marks (‘COVID-RELIEF’, ‘NOCORONA’ ‘DHL CORONAVIRUS PREVENTIVE’) fulfilling their desired objective of purging COVID-19 appears to be a misrepresentation.
Further, Section 9(1)(b) provides for refusal of registration of marks “which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.”
Some of the marks under Class 5 brandish the use of the products being sold under them, for example ‘COVID-RELIEF’, ‘ANTI-CORONA’, ‘NOCORONA’ and ‘CORONA SAFE’. Such marks clearly fall within the wording of Section 9(1)(b) of the Act, as they are completely descriptive in nature. However, as per the proviso to Section 9(1), a descriptive mark may be eligible for registration when it has acquired distinctiveness. However, all these marks are ‘proposed to be used’ and an argument about acquired distinctiveness would not stand for the present marks.
An attempt at profiteering in times of COVID-19: Sanitizers and Food Supplements
Sanitizers, forming the backbone of the fight against the virus have been ‘out of stock’ on most mediums for the last few weeks. Although people have improvised by using surgical spirit and alum to kill the virus, there have been many cases of local manufacturers supplying fake sanitizers (eg: here, here). It is extremely saddening that there are no general standards in India for manufacture of sanitizers, unless these standards happen to be in the Indian Pharmacopeia 2018 which is accessible only on the payment of an astronomical price. The reference to the Indian Pharmacopeia is drawn from the Second Schedule of the Drugs and Cosmetics Act, 1940 which mentions standards for drugs manufactured in India. For standards not covered explicitly in the Second Schedule (like sanitizers), the heading of ‘other drugs’ refers to the Indian Pharmacopeia or Pharmacopeia of any other country. It is imperative in light of the current emergency-like situation that the government should set out standards for the manufacture of sanitizers effective to tackle COVID-19 (despite my best efforts, I could not find any such standards readily available to the public; open to correction). For example, the U.S. FDA has recently set standards for manufacture of sanitizers effective against coronavirus. Aside from the obvious benefit of having and publicizing such standards, it would also help make clear what to do with trademark applications for marks like ‘ANTI-CORONA’, ‘CORONA SANITIZER’ and ‘CORONA SAFE: ANTIVIRUS SPRAY WITH VITMAIN ‘E’’ under Class 5. Without an effective setting of standards by the government, proprietors may adopt similar marks to sell sanitizers, thereby leading to widespread misrepresentation among the public.
Additionally, an application, ‘DHL CORONAVIRUS PREVENTIVE’ mentions ‘food supplement’ in the description of goods under Class 5. This is interesting, as the product claims to ‘prevent coronavirus’. This seems problematic as it runs directly contrary to the provisions of the FSSAI Act, 2006. The FSSAI Regulations, 2016 govern such health supplements, being a term synonymously used for ‘food supplement’ by the Regulations. Accordingly, the FSSAI Act, 2006 prescribes penalty for misbranded foods which specifically cover such products which are sold with ‘false, misleading or deceptive claims’. However, using the food supplement route is a very convenient means to launch a product within a strict timeline as it steers away from the drug regulatory authorities, leading to a faster introduction in the market.
What about already registered marks?
On the other hand, what about the existing trademarks which are similar to ‘coronavirus’ or ‘COVID-19’? Taking inspiration from Swaraj’s post, what happens if the company which manufactures ‘Corona’ beer claims that its brand is being diluted by various applications filed containing the mark ‘corona’? Prima facie, there should be no problem with goods to be offered under Class 5 as the marks concern completely different products, and a person of ordinary intelligence would not associate ‘Corona’, the mark used for beer with pharmaceuticals. Even if it is considered that an application is filed for registration of a tagline which contains the mark ‘Corona’ (similar to this), it will be very difficult to establish trademark dilution. The elements to establish trademark dilution include, first, a higher notch of identity or similarity between the two marks and second, ‘dissimilarity of goods, the claimant mark having a reputation in India, the use of the mark without due cause, resulting in detriment to it, or the defendant taking undue advantage, have to be established.’ It is difficult to ascertain any harm to the beer manufacturer through taking ‘undue advantage’ of its mark or acting to its ‘detriment’, if it strictly relates to a tagline or a guidebook pertaining to COVID-19.
Another interesting question that arises is whether the already registered marks such as ‘CORONA’, ‘CORONA REMEDIES’, ‘COVIDION’ etc. (registered in Class 5) can be cancelled for loss of distinctiveness or their potential to deceive the public, as people are now likely to associate the word ‘corona’ or ‘covid’ only with the virus and disease caused by it? Under Section 57 of the Act, a trademark registration can be cancelled on multiple grounds, the one relevant here being “entry wrongly remaining on the register”. So, one may argue that due to the change in circumstances, the mark has now lost its distinctiveness or has the potential to deceive the public and thus wrongly remains on the register. However, all the cancellation decisions till now (to the best of my research) have been based on similarity to other marks, and not independently on arising of any new circumstances. Also, although IPAB can suo motu initiate cancellation proceedings, it seems that only proprietors of similar marks (being aggrieved persons) have initiated them in most cases. It would be interesting to see if a case of cancellation of any ‘corona’ or ‘covid’ marks comes up in light of the current pandemic.
However, it is highly possible that some proprietors may decide to re-brand themselves/ their products, considering the association with a deadly virus (readers may be interested to read about the ‘COVID’ company in Arizona, the Corona village in India and the Corona mascot of the Austrian village named after Saint Corona). With regard to the proposed trademarks that may create more confusion in these currently very confusing times – it can only be hoped that better sense prevails and such indiscriminate filing of trademarks stops!
Thanks to Swaraj and Pankhuri for their invaluable inputs on this post!
Please click here to view other COVID-19 related posts on SpicyIP.