There's no doubt that these times of lockdown give us the opportunity to mull over curiosities that we might not have noticed under normal circumstances.
For a professional in the field of industrial and intellectual property law—such as the author of this article—one of those questions is undoubtedly how many people have had the idea of capitalizing on the “trending brand” of the moment: COVID-19.
If you check the data, the figures provided by the Spanish Patent and Trademark Office’s website show that from March 12 through May 5, no fewer than 16 trademark or trade name applications have been filed that consist of or contain the term “COVID-19” (all of them, incidentally, filed on behalf of individuals or legal entities domiciled in Spain).
Contrary to some reports that have appeared in various media outlets, it should be noted that none of these requests has yet been granted.
This means, quite simply, that there is not a single citizen today who can claim to have obtained a registered right to the name “COVID-19,” or to any other name that includes it as part of the distinctive combination for which official protection is sought.
Of all these applications, 9 have not yet been subject to an initial examination by the Office, while the processing of the remaining ones has been suspended by the official examiners based on the prohibition set forth in Article 5.1, (f) of Law 17/2001 of December 7, on Trademarks, which prohibits the registration of signs that are “…contrary to the law, public order, or public morals.”
It is worth noting, in this regard, that in all cases, the official notices suspending those seven applications contain—pursuant to the aforementioned article—the following observation: “The sign applied for is deemed to fall under the prohibition established in Article 5.1.f of Law 17/2001 of December 7, on Trademarks, since the mark applied for is contrary to public morals, as it may offend the sensibilities of a broad segment of society by attempting to derive commercial profit by including in the mark the identifying part of the name of a virus that is causing great suffering in our country and around the world.”
We will need to keep a close eye on the final ruling issued by our highest trademark authority regarding the potential registrability of the term “COVID-19,” although it cannot be ruled out that, in cases where applicants specify that the purpose of their application is to protect public health, a favorable decision may be granted.
Aside from that, other related questions arise that may be of greater interest to the average citizen than to a legal professional: Is “COVID-19” truly a trademark that can be commercially exploited with reasonable expectations of profitability? How can products and services be marketed in such a way that “COVID-19” becomes an attractive trademark that encourages the public to consume those products or purchase those services? And, furthermore, if any of the applicants were to obtain registration, to what extent could they prevent third parties from using the term “COVID-19” for commercial purposes in connection with goods or services that are identical or similar to those for which they obtained such registration?
Only time will tell whether we can find an answer to these questions, but it is curious, to say the least, that a name with such a “diabolical” meaning has already been the subject of trademark registration attempts in connection with products such as jewelry, toys, and footwear—or with legal services, to name just a few examples.
What is indisputable is that, even in times as difficult as those caused by a terrible pandemic, we Spaniards are well aware that the primary means of ensuring and protecting the viability of a business venture—whatever its nature—is to obtain a trademark registration.
Author: Luis Beneyto