What it means to trademark the coronavirus in your brand

The COVID-19 pandemic touched South Africa’s shores in March 2020. As cases continue to increase and transmission is ongoing in South Africa, many South African companies (as well as companies worldwide) have decided to apply to have coronavirus related brands registered.

The South African Trade Marks Office has before the lockdown received many applications for coronavirus related brands to be registered. These brands include Covidban, Corona Guard and Corona Care to name a few.

The influx of numerous applications to register coronavirus related brands from companies across the country does not come at a surprise. Often when a big news story comes to light there are plenty of opportunists seeking to benefit from it. COVID-19 or Coronavirus may just be one of the biggest news stories of our time, affecting people globally and leading to plenty of opportunists seeking to benefit from this.

Many of these coronavirus related brands are being applied for in the pharmaceutical goods category. Countless of these applications, however, will not be in the public domain as of yet due to the South African Trade Marks office having to close until the end of April as South Africa enters into a 21-day national lockdown in an attempt to “flatten the curve”.

The use of the words covid and/or corona is, in De Beer Attorneys Inc. view, examples of weak trade marks because they are entirely descriptive of the goods that they are looking to describe. It should be noted that no person or company can claim a monopoly for these words in the above-mentioned category and/or type of product.

Once the South African Trade Marks office reopens at the end of April 2020 it will be interesting to see how the Trade Marks examiner will deal with these applications and whether or not Constellation Products (owner of the infamous Corona Beer) will oppose the trade mark applications.

Section 9 and 10 of the Trade Marks Act set out the criteria which trade marks have to meet to qualify for registration. Section 9 states that a trade mark is required to be distinctive (whether inherently or through use) and section 10 places prohibitions on the registration of marks which may be intrinsic or extrinsic. Therefore, in short, a trade mark should only be registered if it is distinctive as defined by section 9 and it does not contravene any of the provisions of section 10.

To this end, a brand and trade mark must be capable of distinguishing the goods or services of one trader from the goods and services from another trader. The more distinct the better.  For example, the use of “Amazon” as a trade mark and brand for an online retailer company is very distinctive with a lot of brand value.

It will be interesting to see what other coronavirus related trade mark applications come forward after the announcement of a 21-day national lockdown in South Africa and how the South African Trade Marks office will respond to such applications in the future. Such opportunists may have a misunderstanding of how trade mark law works. It is not the “first person to file will be the first person to be rewarded” type of system. Distinctiveness, as well as the bona fide intent to use the term on a specific set of goods and services, will need to be shown.

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