Key points:
- Objections likely if marks are clearly descriptive – may include already common slang
- Filing with no clear intention to use at the time of filing is not a good plan
- Resulting registration may not be easy to enforce
In the last few months you may have downloaded the Australian government’s COVIDSafe(TM) app or you might have made yourself a Quarantini or two. Whichever the case, people the world over are adapting their lifestyles and using new language and new products relating to the current global pandemic.
One might expect that new products and businesses would lead to increased filing of trade mark applications. A number of Covid-19 related marks have been filed in Australia, the majority of which have attracted objections (see below). There is a good reason for this.
If you are considering registering a Coronavirus related trade mark, there are a few things you should keep in mind.
Is my mark distinctive?
One of the questions asked during trade mark examination is whether other traders are likely to desire to use the applied-for mark in respect of their own similar goods or services. Can the trade mark distinguish the goods and services of the applicant from those of other traders?
The worldwide dominance of all things covid means that even relatively newly coined terms – such as Aussie slang, “the ‘rona” – are quickly becoming common. The more common a word or phrase, the greater likelihood that other traders will wish to use it in relation to their own products or services. With this in mind, covid related names may be subject to Examiners’ objections in respect of a wide range of goods and services (see more on distinctiveness here).
Do I have evidence of use to support my application?
Another issue to consider relates to evidence of use. Brand owners who choose a trade mark which is considered to have a limited capacity to distinguish the goods or services of an application may need to support the application with evidence of use. However, compiling sufficient evidence may be difficult due to the short period the virus has been around.
Can I enforce my trade mark?
Once you receive a Certificate of Registration you’ll need to come up with a strategy to monitor and identify potential infringers, and ensure the continued strength of your registered trade mark/s. Before seeking registration, it’s important to consider whether a trade mark is enforceable. Even with sufficient evidence of use to obtain registration, other traders using the mark in a purely descriptive manner are unlikely to be found to infringe your registration.
Do I intend to use my trade mark?
The uptake of people wanting to register common trending phrases illustrates a deeper misunderstanding of how trade mark law works.
Many people believe they can capitalise on a trend and may not realise that it is a requirement of a valid trade mark registration to intend to use the mark at the time of filing. Filing with no clear licensee or intention to use the trade mark is not a good plan. An unused trade mark may also become vulnerable to removal on the basis of non-use.
Our suggestion
We want to make sure your new trade mark is worth the time and cost involved with registration. As always, the strongest trade mark strategy is to choose distinctive mark at the outset. Whilst it is possible to register marks which allude to COVID-19 or include “covid” or another common word or phase along with other distinctive elements, marks consisting only of common covid descriptors are unlikely to result in a worthwhile trade mark registration.
If you need advice or assistance with filing a COVID-19 related trade mark, please contact Kellie kellie@mbip.com.au or Geraldine geraldine@mbip.com.au. We look forward to helping you secure a strong, enforceable trade mark.