Trademarking ‘Coronavirus’ in India – Is it ‘Unhealthy’ or ‘Opportunistic Competition’?
The Pandemic spread due to COVID-19 has caused a wreck havoc across the world and various countries are struggling to detect a vaccination or a potential cure to the virus by means of clinical trials. In such scenarios, where it is essential to meet economic and social stability, various enterprises and business try to make the most of the situation. For instance, several applications have been filed with the Controller General of Patents, Designs, and Trademarks of India for terms like ‘Corona Safe’, ‘Corona Sanitizer’, ‘Corona Sanjeevani’ etc. Simultaneously, there has been news of online frauds and sale of necessary goods at a higher price. One such trademark application was filed for term ‘Corona’ under the classification of goods ‘downloadable computer security software’. In another instance, as per the governments website, Bharat Biotech International Ltd. filed for registration of trademark application ‘Covidac’ on March 12 for manufacture of pharmaceuticals and vaccines.[1]
Majority of the trademark applications with regard to terms like ‘Coronavirus’ and ‘COVID’ were filed under Class 3, 5 and 9 of the Nice Classification of Goods and Services which are pertaining to cleaning masks for face, medical pharmaceuticals and veterinary products and computer anti-virus software. In recent times, ‘China’ has cracked down on the malicious filing of ‘COVID-19’ or ‘Corona-Virus’ related trademarks. Even though India lacks a strict provision with regard to such marks, the trademark applications with regard to ‘Corona’ have been refused by the registry under Section 9 of the Trade Marks Act, 1999 which states the ‘absolute grounds of refusal for registration of trade marks’.
According to Section 9(2)(a) of the Trade Marks Act, 1999, “a mark shall not be registered as a trademark if it is of such a nature that might deceive the public or cause confusion”. Thus, the section 9(2)(a) is primarily concerned that a mark with deceptive nature shall not inherent the quality, name or a geographical origin of a particular goods and services. The mark may present a misrepresentation as to the nature or characteristics of the goods or services.[2] With regard to the present situation, the best response by healthcare experts and government has been ‘social distancing’, ‘sanitizers’ etc. Various proprietors of pharmaceutical companies have come up with names like ‘No-Corona’, ‘DHL Coronavirus Preventive’, etc. to increase sale of their medicines and general public purchases the medicines with a hope to get treatment and vaccinated from the virus. For instance, ‘No-Corona’ mark has been registered under Class 5 for good like veterinary preparation, sanitary preparation for medical purposes and pharmaceuticals. An average consumer shall be of an opinion that medical vaccination for the virus is available in the market and shall spread such false information to their peer groups. However, in contrast to the reality, World Health Organization (WHO) is still in the process to conduct mega-trials and determine the treatment of Covid-19. In the present case, it is quite evident that ‘No-Corona’ is misrepresenting and deceiving the loyal consumers of the company for monetary benefit of the company.
In addition to the abovementioned, Section 9(1)(b) of the Trademarks Act, 1999 states the absolute ground for refusal of registration on trademarks which ‘may serve in the trade to designate the intended purpose, geographical area, time of production, quality, rendering services for products which have characteristics or nature of other goods, kind and quality’. The goods registered under Class 5 like ‘Corona Safe’, ‘No-Corona’, ‘Corona-Relief’ etc., fall under the ambit of this particular section as they laudatory marks and descriptive in nature. In M/s Hindustan Development Corporation ltd. v. The Deputy Registrar of Trade marks[3] it was held by the Calcutta High Court that "the ‘character’ or ‘quality’ of the goods state the nature or peculiarity of the goods. A trademark which is descriptive imparts the information directly". Moreover, as per section 9(1)(a) of the Act, a descriptive mark is eligible for registration when it has acquired a distinctive attribute. As stated in the landmark judgment, Imperical Tobacco Co. of India Ltd. v. The Registrar of Trademark, it was held by the Court that "distinctiveness means some quality in the trademark which shall earmark the good distinctive from its other producers".[4] In the instant matter, all the trademarks shall be proposed to be used and have an acquired distinctiveness, which is not true for the marks registered under the repetitive term ‘COVID’ or ‘Corona’.
However, sanitizers which are the backbone for prevention of the virus have been ‘out of stock’ on most of the crucial times. Although people have improvised the use of sanitizers, there has been news that local manufacturers are supplying fake sanitizers. It is disheartening that India has no general standards for the manufacture and operating the sale of sanitizers across the country. The necessary reference has been made in the Drugs and Cosmetics Act, 1940 which legally operates import, manufacture and distribution of drugs across the country. With reference to the 2nd Schedule, it is not explicitly covered that sanitizers fall in the heading of ‘other drugs’. It is essential to accommodate and set necessary standards for manufacture of sanitizers and masks to tackle the outbreak of COVID-19. For instance, the United States Food and Drug Administration department has recently set standards for the manufacture of sanitizers for effectiveness to control coronavirus. With an effective measure by government, the proprietors of trademark brands like ‘Anti-Corona’, ‘Corona Safe’ or ‘Corona Sanitizer’ should stop misrepresenting their brand among the general public.
On the other hand, it is essential to note that there are several existing trademarks which are similar to the terms like ‘COVID’ or ‘Coronavirus’. The renowned beer brand ‘corona’ has, prima facie, been manufacturing the drink for a long time. However, it would be a problem when classification of goods intervenes with the nature of the product, as a person of ordinary intelligence cannot associate ‘Corona’ with a beer than pharmaceuticals. This situation establishes the ‘trademark dilution’, where there is an identity and similarity of two marks and the claimant nark having a reputation in India would lead to defendant taking an undue advantage of the goodwill established by claimant’s product. Another intriguing question which arises that whether ‘Corona’, ’Corona Remedies’ or ‘No-Corona’ can be cancelled for loss due to distinctiveness and fraudulently deceiving its consumers. With regard to the same, Section 57 of the Trade Mark Act which states the ‘power to cancel or vary registration and to rectify the register has a clause ‘entry wrongly remaining o the register’. Also, through IPAB cancellation proceeding can suo motto be initiated.
This can lead to cancellation of trademarks like ‘Corona’ and ‘COVID’. Eventually, several brands shall re-brand their products considering their association with a deadly virus. The Trademark Registry of India should take necessary measures with regard to registration of trademarks like ‘Corona’, ‘COVID’, ‘No Corona’, ‘Corona Relief’ and put an end to the confusion and discrimination in filing of trademarks.
________________________________ [1] Mugdha Variyar, What’s in a name? Corona-virus related trademark applications Pour-In (CNBC TV 18 April 9, 2020) <https://www.cnbctv18.com/legal/whats-in-a-name-coronavirus-related-trademark-applications-pour-in-5651471.htm> accessed on 22 April 2021. [2] V.K. Ahuja, The Law relating to Intellectual Property Rights (3rd Edition, Lexis Nexis 2018). [3] M/s Hindustan Development Corporation Ltd v The Deputy Registrar of Trade Marks AIR 1955 Cal. 519. [4] Imperical Tobacco Co. of India Ltd. v The Registrar of Trademark AIR 1977 Cal. 413.
*The author of this post is Aarushi Relan, a Legal Associate with Sagar Chandra and Associates, and alumnus of Amity Law School, Noida.
Article Number: 2021/LKLR/05B14
The views expressed in this article belong to the author/s and do not necessarily reflect those of the Journal.