COVID & TRADEMARKS: A Fair Opportunism or A Hostile Marketing?
As coronavirus is going to be a major conundrum in 2020, the businesses are finding their ways of making most out of the situation by capitalizing on the consumer recall value of coronavirus. Trademark applications in the United States are filed by the individuals for either branding or for fundraising. Unlike the US, India is seeing the applications from various pharmaceutical companies, software developers, etc. Trademark offices across the globe have been flooding with the trademark applications containing the coronavirus. Should the trademarks be granted? If yes, do they go against the trademark ethics and deceit people? With the increasing competition in the market, can the already existing trademark holders file for trademark dilution?
What is a Trademark?
A trademark is defined under Section 2(1)(zb) of Trade Marks Act, 1999. A trademark is a mark capable of being graphically represented and capable of differentiating between one’s goods and services from the other and may include the shape of goods, packaging, a combination of colors, etc. Furthermore, mark is defined under section 2(m) which enumerates a mark to include a device, brand, heading, label, ticket, name, shape of goods, packaging or combination of colors, etc. There are two essential ingredients for registration of a trademark. They are (i) mark capable of being graphically represented and (ii) capable of distinguishing goods and services of one person from those of others.
Registration of COVID related Trademarks:
In India, various trademark applications have been filed like ‘corona safe’ for hand wash, ‘corona rub’ for sanitizers, etc. These filings are made under class 3, class 5, and surprisingly class 9 of 4th Schedule to Trademark Rules, 2002, which pertains to anti-virus software. China, recently, declined all the trademark applications saying these are against Article 10.1.8 of Chinese Trade Mark Law which prevents the registration of signs that are ‘detrimental to the socialist ethics or customs, or others have unwholesome influences’. We don’t have any such provision in the Indian Trademarks Act, 1999. But section 9 of the Act lays down absolute grounds for refusal of registration of trademarks. In particular, Section 9(2)(a) of the Act aims to prevent registration of marks, symbols, words, or phrases which deceive the public. In this time of crisis, the average customer believes that the medical preparation of the product is set to keep the disease at bay. The marks like Covid-relief, Covidroxyl, Covid Fighter-4M, etc. portray an objective to purge the Covid19, constituting misrepresentation under Section 9(2)(a) of the Draft Trade Mark Manual, 2015. An application, DHL Coronavirus Preventive, was filed under the Class 5 ‘food supplement’ category. This is unsurprisingly problematic as it claims to prevent coronavirus. These fall under the ambit of Section 9(1)(b), as the words are completely in a descriptive form with an intended purpose to prevent coronavirus. In this detrimental situation, businesses might try making profits through misrepresentation and swindling. Therefore, if the filings are made, it will have a negative impact on the public at large.
India’s 1st Trade mark case relating to COVID:
The dispute between Hindustan Unilever (HUL) and Reckitt Benckiser (RB) is considered to be India's first trademark dispute relating to coronavirus. The HUL, manufacturer of lifebuoy, alleged that RB's advertisement of Dettol handwash is infringing trademark rights. Section 29 of Trademarks Act defines the trademark infringement as an unauthorized person using a trademark that is identical or deceptively similar to an existing trademark. In the present case, the contention put forth by HUL is that the Dettol handwash ad is derogatory to lifebuoy soaps by showing a soap which is in same shape, color, and configuration as the registered red lifebuoy soap.
The defendants in most of the cases are more likely to use two defenses in cases like the one aforementioned. Section 30(1) of the Trademarks Act, 1999 states that an advertisement will not be considered to be infringed if it is believed to be an honest practice in commercial matters and does not take any unfair advantage. The defense of commercial ‘free speech’ is invoked under Article 19(1)(a) of the Constitution of India. It claims for the protection of commercial speech as not unfair, untruthful, or misleading.
The Doctrine of Trademark Dilution:
Trademark dilution is a concept that gives the owner of a renowned mark to bar others from using that mark in a way to dilute its reputation. There are two types of trademark dilution.
(i) Blurring: Blurring takes place when the third party’s mark gives an illusion that it has an alliance with the eminent mark. It tampers the uniqueness and reputation of the famed mark.
(ii) Tarnishing: Tarnishing occurs when a famous mark’s individuality is injured through the usage of similar mark or trade name.
Section 29(4) of the Trademarks Act, 1999 introduced the doctrine of trademark dilution. In the case of ITC v Philip Morris Products SA & Ors, the court laid down certain essential ingredients to be satisfied for determining dilution. The essential ingredients are as follows:
(i) a similar or identical mark that already has a reputation in India.
(ii) such trademark is used in relation to good or services which are not similar to those for which the trademark is registered.
(iii) the usage of such mark is taking unfair advantage and is detrimental to the reputation of reputed mark.
Companies and businesses across the globe are pouncing at the chance of making the maximum in this time of havoc. In the neutral point of view, trademarks truly have the potential to directly increase the profit margin. However, the products might gain momentum in the short run but are not pragmatic in the long run. Another issue raised in this dimension is that they are overshadowing the genuine filings made by the healthcare industry and pharmaceuticals. Many businesses, taking into account the emotional differentia of the people, are considering re-branding their products. In the end, what businesses have to understand is, the ‘get rich fast’ scheme mostly tends to fail in the monetary front.
The Trademarks Act, 1999
ITC v. Philip Morris, 2010 (42) PTC 572 (Del.)