These times during the lockdown have certainly given us the opportunity to ponder over matters that perhaps might not have occurred to us under normal circumstances.

For an IP professional such as myself, one such curiosity has undoubtedly been the number of people who have had the idea to try to take advantage of the “brand of the moment”: COVID-19.

Is it possible to register the trademark COVID-19?  

If we check on the numbers by consulting the Spanish Patent and Trademark Office’s database, we may see that between 12 March and 5 May, there were no fewer than 16 applications for trademarks or tradenames consisting of or containing the term COVID-19 (all filed, incidentally, in the name of natural or legal persons domiciled in Spain).

Contrary to some reports published in the media, it should be pointed out that none of these applications have yet been granted.

This means that as things currently stand, not a single person in this country can claim to have secured registered rights in the term COVID-19 or any other expression containing that term for which they have sought official protection.

Of these applications, nine have not yet undergone initial examination by the Office, while the prosecution of the rest of the applications has been suspended by the Office’s examiners based on the bar to registration laid down in Article 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), which prohibits the registration as trademarks of signs which “are contrary to law, public policy, or accepted principles of morality”.

In this regard, it is worth mentioning that in each case, the official actions suspending the prosecution of these seven applications contain, in relation to the application of the aforementioned provision, the following observation: “It is held that the sign applied for comes under the bar to registration laid down in Art. 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), given that the sign applied for is in breach of accepted principles of morality, since it could be offensive for a broad section of society insofar as it attempts to make commercial gain, by including in the sign the identifying part of the name of a virus which is causing great suffering in our country and across the world”.

We will have to wait to see what stance the Spanish trademark authority adopts in relation to the registrability of the term COVID-19, although in those cases where the applicants specify that the purpose of their application is the preservation of public health, the possibility that they may obtain a favourable decision cannot be ruled out.

In any case, there are other side issues which may be of more interest to the average citizen than to legal professionals, such as: Is “COVID-19” really a sign that can be commercially exploited with reasonable expectations with regard to profitability? How can goods and services be marketed in such a way that “COVID-19” becomes an attractive sign that moves the public to consume those goods or acquire those services? Furthermore, if any of those applicants were to secure registration, to what extent could they prevent third parties from using the term COVID-19 for commercial purposes in relation to goods or services identical or similar to those for which the registration was obtained?

Only time will tell when it comes to gaining answers to these questions, but it is certainly curious that a term with such horrible connotations has already been the subject of applications for registration in relation to goods such as jewellery, toys or footwear, or legal services, to cite just a few examples.

What is beyond doubt is that, even in such difficult times as those experienced during a terrible pandemic, it is clear to people in Spain that the main instrument for guaranteeing and protecting the viability of a commercial project, whatever the nature of that project may be, is to obtain a trademark registration.

 

Author: Luis Beneyto

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