COVID 19 or CORONA: Aapda or Avasar for Pharmaceutical Industries?

The worldwide pandemic (Aapda) of coronavirus disease, widely referred to as COVID-19, appeared as an Opportunity (Avasar) for the pharmaceutical industry. Apart from having a lot of pressure on the pharmaceutical industry to accelerate vaccines and treatments as soon as possible, the industry is also making an effort to obtain the benefit from their Intellectual Property.  Not only the pharmaceutical industry but the industry involved in the making of sanitizer and face masks is also striving to reap the benefit from its intellectual property. Consequently, a plethora of trademark applications for the mark containing COVID or CORONA is filled for registration at Trademark registration worldwide. However, the question which arises here is that- can these descriptive words be registered under the Trade Mark Laws? Here, in this article, I have analyzed a recent trademark application filed for COVI SHIELD as a trademark for the vaccine in light of registrability issues and difficulties in seeking the registration of such formative marks.

Trademark Application by SII

On 6th June 2020, Serum Institute of India Pvt. Ltd. (SII) filed a trademark application for the word mark COVI SHIELD bearing the application number 4522244 for Vaccine for Human Use.  As per data available on the Trade Mark Registry the status of the Application is objected and is ready for show cause hearing. The application was objected on relative grounds under Section 11 as the mark is identical with or similar to earlier marks in respect of the identical or similar description of goods or services and thus there exists a likelihood of confusion on the part of the public.

But trademark inclusive of word COVID or Corona can be registered?

To answer this question, we have to discuss first the Trade Marks Act, 1999 which prohibits the registration of a certain mark under Section 9 and 11 of the Act. The relevant grounds which attract the registrability of the COVID/Corona related marks can be discussed as follows:

(i)    Marks not capable of distinguishing the goods of one person from those of another: For the registration of a trademark, it is required that the mark has the ability to distinguish the goods or services of one proprietor from those of others.  The mark containing COVID or Corona lacks such ability to distinguish the goods or services and thus they may be objected under Section 9 (1) (a) of the Trade Marks Act, 1999.

(ii)   Descriptive in nature: It prohibits registration of a mark that is descriptive and indicates the kind, quality, quantity, purpose, and value of the goods or services. For instance, marks like COVID-RELIEF, CORO-SHIELD, COVID-CARE, etc. composed of word related to COVID-19 pandemic may be refused on the ground that it is descriptive in nature.

(iii)   Likely to deceive the public or cause confusion: It prohibits registration of a mark that is likely to deceive the public or causes confusion. The mark like COVID SHIELD or COROCURE may create confusion or deceive the public that it will prevent from the New Coronavirus. For instance, a trademark application for CORONIL- an immunity booster tablet produced by DIVYA YOG MANDIR TRUST creates an impression that it may help in providing cure or protection from the virus, which is not true in this case, and the tablet market under the name of CORONIL is only an immunity booster and nothing else.

(iv) Marks already existing in the Trade Mark Registry: As per the data available in the Trade Mark Registry there are marks that are already registered in the Registry before the COVID-19 pandemic. In such cases it prohibits the registration of the new mark on the ground that it may cause confusion in the mind of the public on the basis of an earlier existing trademark. For instance, trademark CORONA, CORONA REMEDIES (LABEL) is registered by CORONA REMEDIES PVT. LTD. in 2004 with user details in 2000.

Discussion and Conclusion

From the above discussion it can be drawn that mark inclusive of word COVID or CORONA cannot be protected as a trademark, especially for pharmaceutical products since such a mark could be considered as descriptive or lacks distinctiveness. However, at the same time, it is pertinent to note that there is a possibility that such mark can get register for completely unrelated goods and services like clothing, telecommunication, or legal services.

Currently, most of the applications are at the examination stage and some of the applications were objected to under Section 11 of the Trademarks Act. It will be interesting to see whether the Trade Mark Registry will grant registration to any mark consists or composed of COVID or CORONA. As a precautionary measure the pharmaceutical industry should not adopt the word COVID or CORONA as it is descriptive in nature.  It may also be prohibited under the Food Safety and Standards Act, 2006 or under Drugs and Cosmetics Act, 1940 as misbranded foods or misbranded drugs.