To register a trademark linked to a current event seems an irresistible temptation for some.
In the wake of the Charlie Hebdo attacks, the expression “Je suis Charlie” was born. This expression has become one of the most used in the history of Twitter. We then witnessed a strange phenomenon: massive attempts to register trademarks for “Je suis Charlie”. It was in 2015
Sometime later, the “Yellow Vests” movement developed in France. Rebelotte: many attempts to register trademark online for the expression “Gilets Jaunes” and its variants. Which is sure to cause a problem, as I was discussing at length.
Then came “Brexit”. Bis repetition. The Grand Chamber of Appeal of EUIPO even had to be referred. His decision: it is not legally possible to register the term “Brexit” as a trademark, on the grounds in particular that the public will not see this term as a trademark, but simply as a topical fact, a historical fact, and a “reference to the UK’s exit process from the EU”. I refer you, for the details.
As one could guess … some have put the cover back with the Coronavirus or Covid-19, which is hitting heavily and sadly all of humanity at this time.
The operation is likely speculative; undoubtedly, its goal is to create a buzz, to ride the wave, to make a splash … But it has little chance of success.
In fact, in order to be able to be protected, a mark must be “distinctive”, ie. be able to be perceived by the public as a brand; as an indication of the commercial origin of products and services. The essential function of a trademark is to distinguish the goods and services of one company from those of another. This is distinctiveness – an essential and fundamental condition for the validity of a mark.
However, the terms “Coronavirus” or “Covid-19” having been used so much (we talk about it every day, everywhere, on television, on Twitter, in the written press, in government press releases, WHO etc.) and having become words so common in our vocabulary, that it is very clear that no one will be able to see in these terms anything other than a difficult period in our history, a pandemic, a health disaster … In other words , a topical fact that will later become a historical fact. In this context, it is difficult to see how these terms “Coronavirus” and “Covid-19” could, given the massive use made of them in connection with this news, be perceived by anyone as a brand.
“50 The Grand Board of Appeal considers that since consumers knew the meaning of the word ‘Brexit’ on the date under consideration, namely an event relating to a historical and political process, the mark, which combines the word with the flag of the United Kingdom , would be perceived by consumers, once applied to cans and bottles of drinks, only as a designation of this event, thus obscuring any possibility that it would be perceived as an indication of the specific industrial or commercial origin of the products ”.
As a trademark lawyer that I am, therefore, “Coronavirus” or “Covid-19” trademarks have practically no chance of being validly registered…
Moreover, the Benelux Office for Intellectual Property has already published a press release to this effect, entitled “Registering a trademark linked to the coronavirus”.
In this press release, the Office warns:
“In recent weeks, BOIP has received various requests for trademark filings that refer to the coronavirus. Most of these requests will have to be refused. (…)
When a large-scale event receives high media coverage, such as the coronavirus epidemic, its simple designation quickly takes on a descriptive character. A trademark registration that contains this description will therefore be refused by our services. In addition, this type of request may be deemed contrary to public order and / or good morals.
Do you intend to file a trademark that refers to the coronavirus? Please note that your registration request has a good chance of being refused”.
So be careful before filing a trademark related to a current event! This is not necessarily a good idea …