COVID incorporating marks in a global pandemic – To file or not to file
08 Sep 2021
It has been widely reported in the National Law Journal that hundreds of applications have been filed with the U.S. Patent and Trademark Office attempting to register marks incorporating the word COVID since the pandemic began last year. Some of the examples of applications that have been reported are COVID-19 VIRUS FREE GUARANTEED for apparel and other consumer goods and “COVIDFREE” for antibacterial goods.
It is reported that most of these applications will not be accepted as registrations in the United States as same require actual use or a bona fide intent to use the mark and most of the applicants will not be able to establish the necessary intent required or will not make any commercial use of the trade mark. So, it appears that the current global pandemic creates an opportunity for some applicants to financially benefit from these trade marks, in that such applications may prevent business owners from legitimately making use of certain marks.
It has been further reported in the National Law Journal that the primary issue with these opportunistic applications is the inability to prove lawful use in commerce. In the United States, registration is awarded to the first to file for and use the mark in commerce. If the applicant of the trade mark has not yet used a trade mark but does have a bona fide intention to use same, it may file an intent-to-use application, which allows an applicant to reserve a priority date. It is reported that most of the so called COVID related applications in the United States have been filed in this way. However, if the applicant has no intention of using the mark, it may be difficult for the applicant to provide evidence of bona fide use of the mark in commerce.
In the slim chance that the applicant is able to prove commercial use of the trade mark, such trade marks are still required to satisfy the requirement of the Act in the form of eligibility requirements, or substantive bars, to registration. In this regard, it has been reported that the USPTO has already issued official actions refusing registrations for the marks, such as COVID CARE and COVID-19 FREE, on the basis that such marks do not satisfy the above requirements of the Act.
Turning now to South Africa, a recent search on our South African Trade Mark Registry has revealed that there are a number of COVID incorporating trade marks applied for in various classes in the names of different proprietors. Most of the trade mark applications were made last year and some have already been provisionally refused while others are accepted with conditions.
In terms of Section 9 of the Trade Marks Act No 194 of 1993, to qualify for registration, a trade mark must be capable of distinguishing the goods or services in relation to which it is used, or proposed to be used, from the same or similar goods or services of others. A trade mark will fulfil this requirement if, at the date of application for registration, it is inherently capable of distinguishing the goods or services in question or if, because of its prior use, it is capable of distinguishing the goods or services
In terms of Section 9, on prima facie, purely description marks do not meet the requirement of registrability.
In determining if a mark is inherently capable of distinguishing an applicant’s goods or services from those of others, an important consideration is whether or not other traders are likely, in the ordinary course of their trade, without improper motive, to use the same mark or some mark nearly resembling it, upon or in connection with their own goods or services.
Section 10 sets out when certain marks may be excluded from registration as trade marks. This includes, inter alia, a mark that the applicant has no bona fide intention of using as a trade mark, either himself or through a person permitted by him to use the mark.
In South Africa, in order for a mark to qualify for registration, it must satisfy the requirements set out in Sections 9 and 10. As indicated above, purely descriptive marks, marks that are common in the class of interest or reasonably required for use in trade will fall foul of Section 9.
With regard to Section 10, it is not necessary to prove actual use of a trade mark in respect of all or any of the goods or services covered by the application at any time prior to registration. It is sufficient that the applicant has a bona fide intention to use the mark as a trade mark, either himself or through any person permitted by him to use the mark.
Unlike the United States, in South Africa it is not necessary for a proprietor to prove the use of a trade mark in relation to all or any of the goods or services covered by the registration, in order to maintain the registration.
However, if the trade mark is not used in relation to all of the goods or services covered by the registration for a continuous period of five years, the trade mark registration will become vulnerable to expungement or removal (or partial expungement if only used in relation to some goods) at the instance of a third party, usually done through formal expungement proceedings brought by the third party.
Section 27(1)(a) of the Trade Mark Act also provides for the removal of a trade mark if it can be shown that the trade mark was registered without any bona fide intention on the part of the trade mark applicant that the mark should be used and that there has been no bona fide use of the trade mark for the time being up to a date three months prior to the date of the application for removal.
This ground for removal would be relied upon to deal with so-called defensive registrations, where a trade mark is registered in relation to goods or services completely unrelated to the proprietor’s business and in respect of which the proprietor has no plans to use the trade mark in the near future, or where a trade mark is registered purely to prevent a competitor from registering or using its trade mark.
Thus, it is advisable for business entities that intend making use of a COVID incorporating mark or any similar mark in relation to goods and/or services as a source identifier (i.e. as a trade mark) to ensure that the mark is available for use as such and that it satisfies the other registrability requirements in terms of the Act.
Should you consider filing any mark, we can assist you in conducting the necessary trade mark availability searches at the trade mark registry to ensure that the chosen mark is available for use and/or registration as a trade mark in relation to the goods and/or services. We will also advise you if the chosen mark satisfies the requirements of the Act. These searches and advice will assist in avoiding/limiting any possible interference in using the mark as a trade mark as well as possible litigation from third parties. This is particularly important for any business when investing in a new trade mark.
See also:(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)