Like after other recent major events and disasters, trade mark applications are being filed in an attempt to profit from the recent COVID-19 virus outbreak.
On the 19th of March 2020, a Brisbane-based individual filed a trade-mark application for COVID-19 for a wide range of services, including “News reporters services”, “Publishing of documents”, “Publishing of newspapers” and “Electronic publication of information”.
Why would someone file such a trade mark application?
A registered trade mark provides the owner with the exclusive right to use the trade mark, which can include licensing the trade mark (e.g. allowing others to use the trade mark in exchange for a license fee).
While we can only speculate as to the motives of such trade mark applicants, it could be an attempt to get paid every time the term is used in media, and thus profit from reporting on the COVID-19 virus outbreak.
Does that mean we have to pay to use the word COVID-19 in media?
No.
The application is currently awaiting examination, and thus has not been registered. Furthermore, we do not expect the trade mark to be registered.
Firstly, there is provision within the Trade Marks Act to reject trade marks which are “scandalous”. IP Australia has used such provision to reject trade marks relating to disasters previously.
Secondly, there is provision to reject trade marks on the basis that other traders should be entitled to use the mark with respect to the services being sought, or that the trade mark could not be adapted to distinguish one trader from the other.
While a relatively new trend, unfortunately this has happened before.
A Kuala Lumpur based company sought to register a trade mark for “MH17” after flight MH17 was shot down over Ukraine. This was quickly rejected by the trade marks office.
An Australian company sought to register a trade mark for “MH370” after flight MH370 went missing. This application was also rejected by the trade marks office. In short, IP Australia found that the word “MH370” conveyed a specific meaning to ordinary Australians as the flight number of the missing Malaysian Airlines aircraft, and it therefore could not be used to distinguish one trader from the other.
We do not believe that COVID-19 will be registered for the services being sought, and do not believe that it is registerable. We believe that the COVID-19 conveys a specific meaning to ordinary Australians, and thus cannot distinguish one trader from another, particularly in the context of publishing information.
Even if it were to be registered, such registration would not preclude others from using or referring to the term in a descriptive sense.
Lesson about self-filing
The applicant of the COVID-19 appears to have used a do-it-yourself trade mark filing service (DIY TM LIMITED).
Many of these services simply file a trade mark application without any review by an attorney. As a result, you may be filing a trade mark application which, from the outset, is invalid.
The risks with a self-filed (or DIY) trade mark application are not only wasted time and money. If the trade mark is valuable to you (e.g. your brand) – you may have the mistaken belief that you are protected, when your brand is in fact vulnerable.
Please contact us if you would like discuss trade marks or your intellectual property.
