IP Australia’s natural immunity to COVID-19 trademarks

0

IP Australia has taken a strong stand against trademark applications containing references to COVID-19. Bypassing the normally long window to overcome objections, IP Australia immediately issues notices of intent to deny trademark applications for these trademarks. The notice of intention to reject indicates that the examiner considers that there is no further action the applicant can take to persuade the examiner to withdraw the objection, and restricts the applicant to filing a final response or to request a hearing within only two months.

Key points

  • Australian trademark applications that contain references to COVID-19 receive objections on the grounds that they are scandalous, among other objections.
  • IP Australia is also bypassing the normal 15+ month window to overcome objections by issuing notices of intent to reject in many cases.
  • Trademark applications that only contain COVID-19 references are the most likely to receive first notices of intent to reject.
  • The question arises as to whether the references to COVID-19 are legitimately outrageous in Australia and perhaps there is a reasonable basis to challenge this objection. Nonetheless, the descriptiveness of the term COVID-19 is likely to remain an issue.

COVID-19 trademark filings

Since March 2020, unsurprisingly, a large number of trademark applications have been filed for the “COVID-19”, “CORONA”, “CORONAVIRUS” brands (hereinafter the COVID brands) in Australia.

In response, IP Australia took the unusual step of immediately issuing a notice of intention to reject these applications, concluding that the marks are not registrable and that the arguments are unlikely to change their position and only giving applicants 2 months to respond. Normally, applicants have 15 months to overcome objections and would be entitled to file multiple rounds of submissions before the office considers issuing a notice of intent to reject.

Based on our review, at least 21 trademark applications for COVID-19, CORONA or similar marks have been rejected by IP Australia using this method. The objection is raised apparently regardless of trademark coverage with rejected trademarks covering a variety of goods and services, including cosmetics, medicines, entertainment services, publishing services, books, clothing, legal services and many more. Here are some examples of brands that have been refused:

Why are COVID-19 marks rejected?

Based on a sample of review reports, provisional refusals and notices of intention to reject, it appears that IP Australia primarily rejects these requests under Article 42 of the Trademarks Act on the basis that registering COVID-19 trademarks would be scandalous or offensive to ordinary Australians “because of the detrimental impact of the pandemic in Australia”.

Given Australia’s irreverent culture, trademarks are rarely rejected on the grounds that they are outrageous. However, this objection is more common in some Asian countries, especially when it comes to brands, which refer to nudity or sexuality.

In addition to section 42, as one would expect, it appears that a number of these COVID requests have received additional grounds for rejection, such as “COVID-19” is not distinctive as it is descriptive when used in connection with pandemic-related products or services (medical supplies and services, cleaning products and services, etc.).

Article 42 (a) – Scandalous case

Based on the cases we reviewed, when a COVID application received a notice of intent to reject, it was on the grounds that it contained scandalous facts under section 42 (a) of the Act. . Judicial review of this ground is sparse and largely falls within the ordinary meaning of section 42 (a) of the Act:

An application for registration of a mark must be rejected if: (a) the mark contains or consists of scandalous elements”.

The approach of the courts and IP Australia seems generally to be whether the mark would currently be offensive to a portion of ordinary Australians without thick or thin skin. This is a difficult balancing act considering what is and is not offensive to the community at large. Decision-maker Mr Myall effectively sets Goldilocks standard perhaps unattainable in UK case Brand Alleluia [1976] RPC 605 to [607]:

“… Religious and moral norms are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have clearly set an example. While he should not remain isolated from the everyday world, stuck in a set of outdated moral principles, he should not pretend to set the standard either. He should certainly not act as a censor or an arbiter of morals, nor even as an avant-garde. He should not be so far behind the climate of the day that he seems out of touch with reality, but at the same time he should not be so insensitive to public opinion that he accepts a trademark for registration that many of people would consider it offensive. “

Other guidance in the IP Australia Examiner’s Manual indicates that while phonetic equivalents of profanity like PHAR QUE are acceptable, overt phonetic equivalents such as FUCT are not. Of course, some cases are easier than others, and trademarks containing personal abuse, racial or ethnic abuse, religious intolerance, or abuse of the national flag are clearly outrageous.

Are COVID Marks Outrageous?

Given the overall effect of the pandemic on the community, there is likely widespread descriptive use by businesses of the term COVID / CORONAVIRUS to describe and promote their products and services, from cleaning products and face masks to entertainment. However, based on our experience and online research, such use does not appear to create any upheaval or outrage in the community.

Even the federal government has pending applications such as COVIDSAFE (# 2091935, 2091936, etc.) that have objections but have not received notice of intent to reject. This brand is the name of the well-known, albeit unpopular, government mobile app COVIDSAFE, but there does not appear to be any public concern regarding this use of COVID.

It is therefore reasonable to consider that COVID marks are not scandalous or offensive in and of themselves in the way swear words are generally considered to be. It’s not as if the widespread use of these terms by government officials, media or business upsets the community (beyond the lingering pandemic weariness and fatigue many of us feel) which is in stark contrast to the reaction one might expect. of a truly scandalous brand. One would expect there to be some backlash if government officials, media and businesses used profanity or blasphemous statements as shamelessly as they refer to COVID-19.

Overall, it’s hard to see how a reference to COVID-19 along with other terms is inherently outrageous. Additionally, if we consider specific examples like # 2078868 or hand sanitizer and # 2072950 CoronaClean for detergents and disinfectants, which are perhaps broadly descriptive, it is difficult to see how these brands are susceptible to scandalous use. Especially at such a level that it is so clear that a notice of intent to reject should be issued on that ground alone.

Are all COVID-19 brands rejected?

IP Australia does not take this harsh approach with all brands that contain COVID-19 credentials. IP Australia tends to allow fairly independent decision making by its reviewers. So, while a review of the Trademark Registry suggests that examiners primarily take that harsh approach of issuing the Notice of Intent to Reject for trademarks that only include a COVID-19 reference or that only understand that COVID-19 reference. reference with other descriptive words, the model is not coherent enough to formally draw this conclusion.

Here are some examples of COVID marks the office has registered:

Number Mark Classes
2082050 EHealthier Interim Behavioral COVID Vaccine 44
2091534 DisCovid 5

Likewise, a few examples of COVID marks for which the office has not issued a notice of intent to reject:

Number Mark Classes
2091937 9, 42, 44
2099439 covid19-clean 35
2101141 CAVE – Site of excellence evaluated by Covid 41, 42
2106483 CovidPass 42
2115891 CovidSafe Air 11, 40
2147040 COVID 19 SENTINEL 1, 5, 42, 44

If there was a uniform approach taken at IP Australia, it would be difficult to see why # 2099439 covid19-clean and # 2115891 CovidSafe Air did not receive notice of intent to reject, and yet the No. 2072950 CoronaClean received such a notice. The only clear line seems to be that the requests, which only refer to COVID-19 with no further elements, almost certainly appear to receive a section 42 (a) objection and a notice of intent to reject.

Conclusion

While we remain skeptical about the relevance of the Section 42 (a) objection to most if not all COVID marks, it seems clear that a distinctiveness objection would generally be appropriate. In certain circumstances, the use of the COVID-19 mark which is potentially misleading could also be more deserving of receiving an Article 43 which could mislead or confuse the objection. While CovidKey number 2084582 for ‘openers, non-electric’ is unlikely to be covered by any distinctiveness or likely to lead to confusion, it is also not clear how such a mark for openers. -portes is scandalous and deserves the notice of Intent to Reject it has received.

Regardless of the merits of the outrageous objection, it is clear that many COVID trademark filings, especially those that do not contain any other material, may have been filed in bad faith by opportunistic parties hoping to profit in some way or another of a registration for “COVID-19” and should not be registered. Taking prompt action by issuing notices of intent to reject sends a clear message and quickly removes those requests from the registry. Ultimately, by denying registration for many of these COVID marks, IP Australia is preventing unproductive disputes over clearly descriptive use and potentially misuse (intentional or unintentional) of these registrations.

Going forward, it is worth watching to see if this might signal a change in the practice of issuing intent to reject notices at IP Australia. Perhaps they will start issuing these notices much sooner for hopeless requests, especially harmful requests, which remain common in the registry.

Share.

About Author

Comments are closed.