THE COVID-19 TRADE MARK CRAZE: WHAT IT MEANS TO INCORPORATE A VIRUS INTO YOUR BRANDING

The COVID-19 pandemic reached South Africa's shores in March 2020. As cases of infection continue to rise and transmission is ongoing in South Africa, many companies in South Africa and other parts of the world have decided to apply to have coronavirus-related trade marks registered.

Before the national lockdown even started, The South African Trade Marks Office had begun to receive numerous 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 as a surprise. Often, when a big news story comes to light, plenty of opportunists appear, seeking to benefit from it. Considering that COVID-19 may prove to be one of the biggest news stories of our time, it should be no surprise that Covid would inevitably turn into a cash grab for some.

Many of these coronavirus-related brands are filing their trade mark applications 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 our view, an example of a weak trade mark because they are entirely descriptive of the goods that they are looking to describe. One should note that no person or company can claim a monopoly for these words in the abovementioned 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.

Sections 9 and 10 of the Trade Marks Act set out the criteria that trade marks must meet to qualify for registration. Section 9 states that a trade mark must be distinctive (whether inherently or through use), and Section 10 places prohibitions on the registration of marks that may be intrinsic or extrinsic. Therefore, a trade mark can only be registered if it is distinctive as defined by section 9 and 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 another. 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 rewarded” type of system. Distinctiveness, in addition to, the bona fide intent to use the term on a specific set of goods and/or services will need to be shown.