Since the outbreak of the corona virus, people have increasingly tried to register corona terms as a trademark. This also happens in the Benelux. But why do they do that? And does it make sense?
Every time there is an important event, people make trademark applications referring to that event. It is the same with the corona virus. People apparently hope to take advantage of the monopoly that a brand offers. One remarkable remark after another is made to official trademarks, such as the Benelux Office for Intellectual Property. BOIP is the official trademark organization in the Benelux. The question is whether you can monopolize these terms.
If you search in the Benelux trademark register, you will come across many “separate” trademark applications. Some examples are the following 3 trademark applications, which were recently made at BOIP:
- COVID-19 SURVIVOR for, among other things, T-shirts and caps;
- CORONA BABY, for baby clothes;
- CORONA THERAPEUTICS, for medical services and other services.
These applications have been refused for the time being. This means that BOIP believes that these applications do not meet the requirements for brands.
What is a trademark?
A brand gives you a monopoly for using that brand for certain products or services. However, a trademark application is only eligible for registration as a trademark if it meets the legal conditions of trademarks. The legal purpose of a trademark is that the consumer can recognize the product or service for which the trademark has been applied for as originating from a particular company. Example: you buy an Apple computer because that brand promises you a certain quality and design of a certain company. As important preconditions for achieving this goal, the brand must have distinctive character and must not be descriptive. This involves looking at the products and services for which the trademark is applied for.
What does “having distinctiveness” and “not being descriptive” mean?
If a brand has distinctive character, it ensures that the consumer can recognize that a product or service belongs to a certain company, so that that consumer can make his purchasing decision. If the consumer cannot see a brand as a brand and thus does not exercise its basic function, it has no distinctive character.
A brand can lack distinctive character for various reasons. For example, it can be too common to be seen as a brand. But it can also be too simple or too complicated, for example. An example of a brand with no distinctive character is a single dot. Because such a brand is too simple, the consumer cannot recognize it as a brand. An example of a brand with distinctive character is a picture of an apple for the product computers.
If a trademark is not descriptive, it does not describe any feature of the product or service for which it is requested. For example, it should not describe who the product or service may be for, or any quality that the product or service may have. Or the place where the product or service can come from. An example of a descriptive brand is “Apple” for fruit juices. Such a brand could describe the taste of the fruit juice. An example of a non-descriptive brand is Apple for computers.
Because a trademark without distinctive character is in many cases also descriptive, these grounds are often mentioned together by BOIP.
This is not about whether a brand is “free”
Please note that this whole story is about the legal requirements for a Benelux brand and not about whether a brand is “free”. BOIP refuses a trademark without a distinctive character and / or a trademark that is descriptive. This is separate from any objection by older trademark holders, if the trademark in question is also too similar to, and is in the same waterway as, an earlier trademark of another.
Everyone knows, of course, that Apple is a registered trademark. I gave these examples to explain what a distinctive and non-descriptive brand would be, and what it wouldn't.
Are the corona terms distinctive / not descriptive?
Against this background, looking at the three above-mentioned coronavirus-related trademark applications, BOIP does not consider the filing under 1 to be distinctive, and the filing under 2 and 3 as distinctive and descriptive. I can easily explain this.
Take the brand under 1. The term “COVID-19” is the official name for the coronavirus, while survivor English is for survivor. The brand does not enable the consumer to see it as a brand, because it is too common for that. The brand is therefore not distinctive.
And brand 2 (CORONA BABY)? In handling the various trademark applications, BOIP now considers the term “corona” as another word for “the coronavirus”, “the coronavirus outbreak” and “the crisis due to the coronavirus outbreak”. This makes this brand descriptive: the baby clothes for which the trademark has been applied for may be intended for babies born during the corona crisis, or who were born during that time. The brand is also not distinctive for the same reason as brand 1.
Brand number 3 (CORONA THERAPEUTICS) is descriptive because it may provide medical services in the form of therapy for people who have been ill due to the coronavirus. And this brand also lacks distinctiveness, for the same reason as brand 1.
“Can” is sufficient
As you can see, it is always about whether the brand can be descriptive. The CORONA BABY brand does not actually have to be for baby clothes intended for babies conceived during the corona crisis. The mere possibility is sufficient for a refusal.
Are corona-related trademark applications always descriptive? Not if you add a distinctive element. The “OLVG CORONA CHECK” trademark, applied for, among other things, in the field of medical testing, is a good example. If only “corona check” had been requested, it would have been refused, because it was descriptive. But the distinctive element “OLVG” is part of the brand, which is the brand of the Onze Lieve Vrouwe Gasthuis hospital in Amsterdam. And then the OLVG CORONA CHECK brand is suddenly no longer descriptive. However, this brand cannot prevent the use of the term “corona check” as it is descriptive. In other words, you do not get a monopoly on the corona term in this way.
There is also another reason why BOIP can decline corona-related trademark applications. One of the various other conditions that brands must meet is that they must not be contrary to morality or public order. BOIP also finds the brand under 1 (COVID-19 SURVIVOR) to be contrary to morality. This is understandable, especially now that so many victims have been caused by the corona virus, and the corona crisis is having such a major impact on the world.
Does it make sense?
So you see, there is little point in trying to make money from this terrible crisis in this way. Indeed, such a trademark will most likely be refused. First of all, a refusal lurks because of the descriptive and non-distinctive character of such brands. After all, terms that have to do with the coronavirus will easily be seen as common and descriptive. In addition, a refusal is also conceivable because of a violation of morality, since such brands may be perceived as tasteless.
If the goal is to monopolize a corona-related term and try to “restore” the descriptive character of your brand by adding a distinctive element, you will be disappointed. After all, as we have seen above, you cannot monopolize a descriptive term in this way.