Trade marks Relating to the Coronavirus

• South Africa

• Intellectual property

26-03-2020

In every crisis, there will be those who seek to get the most out of it. To that end, there has recently been a raft of trade mark applications worldwide seeking to register trade marks related to the novel coronavirus disease (COVID-19), including CORONAVIRUS, COVID, CORONAVIRUS SURVIVAL GUIDE and WE CURED COVID-19. This comes as no surprise as whatever topic or subject matter that is on-trend or has public attention tends to attract such kinds of applications.

However, the coronavirus is a disease of significant proportions, with the rate of infection having reached pandemic scale. The acute respiratory disease, which has no known cure to date, has claimed thousands of human lives the world-over and continues to do so. For that and other reasons, a good number of attempts to register a trade mark relating to the coronavirus are likely to be refused by trade mark authorities. For one thing, a trade mark which seeks to take advantage of a pandemic of global proportion may be seen as being in bad taste, relative to accepted morals. Here, under South African law, in terms of Section 10(12) of the Trade Marks Act, 1993, a trade mark that, amongst other things, the use of which would be likely to be against the good morals of society is not registrable.

Moreover, as a rule, trade marks are required to be distinctive intrinsically for them to be registrable. This is often technically referred to as “inherent distinctiveness”. Inherent distinctiveness looks inwardly at the trade mark itself with the result that trade marks that describe goods or services, or which have notoriety in the relevant field are descriptive, lacking the required inherent distinctiveness. This also applies when a trade mark is used to promote the goods or services to which it is applied. Accordingly, trade marks sought to be registered that refer to or relate to the coronavirus may be found to be descriptive, and may not be registrable as a result, albeit not being contrary to the good morals of society.

If you have plans to apply for the registration of a trade mark that relates or refers to the coronavirus, you should seek advice to navigate what is acceptable or not, and if acceptable, what will achieve registration.