South Africa: Thinking Of Getting That COVID Trade Mark?

Albert Einstein once said, "In the middle of difficulty, lies opportunity". No truer words have been spoken in the context of our current times where the COVID-19 virus has presented devastation to many, but conversely great opportunities to some.

We are witnessing a proliferation in the manufacture of personal protection equipment, immunity boosting medicines and vitamins, ventilators, face masks, hand sanitisers, disinfectants and other items related to this pandemic. Some articles are genuine, quality products originating from reputable manufacturers. Others are arguably sub-standard, while many are counterfeit and downright hazardous. At the same time, at least thirty companies are being investigated or charged with price gouging on essential items like face masks, hand sanitisers and food items. Opportunists are everywhere.

This is the time to "cash in", right? That is exactly what many are doing and the Intellectual Property (IP) Industry has not been spared. Since the beginning of the year, after the emergence of the outbreak and widespread global coverage, numerous domain names incorporating the word COVID were registered by different entities. These domains include covid.asia, covid.africa, covid.app, covid.travel and covid.baby. Interestingly, none of these domains are currently operational and at least one of them is available to purchase for US$999. There is a good chance that the others are too.

Hundreds of trade mark applications comprising or incorporating the words COVID or COVID-19 have been filed in various jurisdictions. Some recent examples include:

• COVID CONFIRM in Australia,
• COVID-19 in Canada,
• MASK COVID logo in the EU,
• FCK COVID-19 in Germany,
• COVID -19 logo in Spain,
• ANTI COVID in Turkey,
• COVID-19 RAPID TEST in the USA and
• COVID 19 WARS in the UK.

It remains to be seen how the respective registries will react to these applications, but many of them are likely to be rejected. One of the universal rules for registering a trade mark is that it should be capable of distinguishing one person's goods or services from those of another. Stated differently, a trade mark should serve to identify the source or origin of goods or services. It is, therefore, unlikely that a word that identifies a current global pandemic will be able to function as a trade mark, and a number of applications are likely to be refused on this. However, if these marks are filed and used in combination with other distinctive matter, one may be able to secure registration.

The South African trade marks office is currently closed due to the national lockdown, but we have no doubt that it will receive its fair share of "COVID"-incorporating trade mark applications once it opens for business. While some applications may pass the inherent registrability threshold and achieve registration, a number of them are likely to fail on the basis that they are not capable of functioning as trade marks.