BY: Ishaan Paranjape and Ved Thakur
Ishaan Paranjape is a third year undergraduate student pursuing B.L.S. LL.B. He attends the University of Mumbai, India. He has a keen interest in Constitutional Law, IPR and ADR.
Ved Thakur is a third year undergraduate student pursuing B.B.A. LL.B. (Hons). He attends Gujarat National Law University, India. He has a keen interest in International Arbitration and IPR.
The COVID-19 pandemic has turned out to be a blessing in disguise for certain sectors, such as the pharmaceutical and textile industries, which try to accrue benefits from intellectual property. Globally, there has been a sudden rise in trademark and patent applications for pharma product names that converge with the name of the virus, such as ‘COVID Sanitizers,’ ‘COVID Survivor,’ ‘COVID Sanjeevani’ etc. However, there is a question as to whether these formative marks using the nomenclature of ‘COVID-19’ and ‘CORONA’ can be registered with the Controller General of Patents, Designs, and Trademarks of India.
In this paper, the authors will analyze Section 9 and Section 13 of the Indian Trademarks Act, 1999 in order to determine the legality of the ‘COVID-19’ and ‘CORONA’ trademark. Furthermore, an attempt is also made to view this issue in light of Drugs and Magic Remedies (Objectionable Advertisements) Act, 1954. The authors will also analyze the trademark trends regarding this ‘commercial’ pandemic at the international level.
Through the Prism of the Drugs and Magic Remedies (Objectionable Advertisements) Act
Pharmaceutical companies tend to earn a larger share of profit by protecting their intellectual property rights. It is imperative to understand that if a trademark is granted for a ‘COVID-19’ or ‘CORONA’ formative mark, it will lead to confusion, and possible health hazards. Also, in India, over the counter sales are common. Several customers purchase products without prescription and this will surely lead to more health risks.
One must consider Section 3 of Drugs and Magic Remedies (Objectionable Advertisements) Act, 1954 (“Act”). The aforementioned section prohibits the publication of any advertisement referring to any drug that suggests or leads to the use of that specific drug for the diagnosis, treatment, cure, mitigation, or prevention of any disorder, disease, or condition specified in the rules formulated under the same Act. For instance pneumonia, pleurisy, nervous debility, fevers, paralysis, epilepsy and others are mentioned in the schedule of the Act.
In the Hamdard Dawakhana case, the Supreme Court of India opined that the objective of this Act is to prevent self-medication, and stated that a curb on such ads is a means to achieve the end of prevention of self-medication. Again, the Apex Court, in the case of Yash Pal Sahi v. Delhi Administration, clarified that the purpose of the Act is to save people from being duped into purchasing medicines just because their effects are advertised in eloquent terms. Such advertisements, combined with a lack of knowledge regarding the name of the medicine and the ingredients present, can cause an average customer to purchase a drug from a local pharmacy which may have the words ‘COVID-19’ or ‘CORONA’ in its brand name but may have nothing to do with treating the virus. In such a situation, the consumer might self-medicate, and this exact situation is what the Act seeks to prevent.
Indian Trademarks Act and the COVID-19 Trademark
Furthermore, one has to consider Section 9 of The Trade Marks Act of 1999. It is clear that the marks which are devoid of any distinctive character are refused to be registered as trademarks under the impugned section. At the same time, Section 9 of the Trademarks Act denies trademark protection to the mark if it designates the kind, quality, quantity, intended purpose, or other characteristics of the product. For instance, if the mark is descriptive in nature, then usually it is not registered. So, we will examine whether the usage of words ‘CORONA’ or ‘COVID-19’ is descriptive.
The ‘CORONA’ or ‘COVID-19’ formative marks clearly try to establish a connection with the pandemic, and thus it can be argued that they can be descriptive in nature. Being ‘CORONA protected’ or ‘COVID free’ describes the quality of the product and thereby does not pass the muster of Section 9 of the Trademark Act. The Honourable Delhi High Court, in the case of Cadila Healthcare Limited v. Gujarat Cooperative Milk Marketing Federation Limited and Ors., confirmed that the usage of the word ‘Sugar-Free’ cannot be registered as a trademark as it describes the quality of the specific product. Similarly, in Marico Limited v. Agrotech Foods Limited., the Delhi High Court frowned upon a company trying to assert its monopoly over the term ‘Losorb’. The word ‘Losorb’ is a replacement for ‘Low Absorb’ i.e., the characteristic of that specific product.
Therefore, the prohibition of descriptive marks is adequately explicit through the aforementioned judicial pronouncements. Section 9 also prohibits granting a trademark for marks that could cause confusion. This scrutiny is especially rigorous when it comes to the pharma sector, because the life and limb of individuals depend upon the products this sector sells, and the health risks inherent to the industry necessitates that there should be no room for confusion.
One must be mindful of the concept of deceptive similarity. A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the original mark that it is likely to deceive or lead to confusion. The case of Milmet Oftho Industries and Ors v. Allergan Inc. clarified the meaning of deceptive similarity and mandated consideration of certain external factors, such as the nature of the goods in respect of which they are used as trademarks and which classes of buyers are likely to purchase the products. In the case of Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd., the Apex Court opined that confusion with regards to drugs could be dangerous to the lives of consumers and, thus, all products that may jeopardize the health of the purchasers have to be considered with greater scrutiny. However, determining if a drug trademark is confusing or deceptive falls under the power of the Trade Mark Registry.
Also, on a bare reading of Section 13 of the Trademark Act, it becomes clear that the names of chemical elements, International Non-proprietary Names (INNs), or any deceptively similar names fall beyond the ambit of being registered as Trademarks under the Trademark Act. This is done to avoid confusion. For instance, an Indian Ayurvedic Company – Patanjali created confusion, when they marketed their product as a cure for the coronavirus without government approval.
The Commercial Pandemic Trademarks vis-à-vis International Perspective
Trademark offices across the world are flooded with trademark applications containing the term ‘Coronavirus’. As of May 15, 2020, there were as many as 86 applications in the United States of America alone. Kenyonken Productions LLC were the first to file trademark applications for ‘COVID-19 Survivor’ t-shirts (February 14, 2020). There are several more applications like ‘FXCK Coronavirus’ for several pieces of merchandise. However, these applications are still at the examination stage. Even the Benelux Office for Intellectual Property (BOIP) in Europe has categorically rejected many trademark applications on the grounds that ‘COVID-19’ is descriptive in nature and lacks distinctiveness. BOIP also put forth that these applications can be rejected on the grounds of being against ‘morality’ and ‘public order’.
China’s Intellectual Property Office states that more than 1500 trademark registration applications have been filed since the beginning of the pandemic. Nevertheless, these applications fall under the ambit of Article 10 (8) of the Trademark Law of People’s Republic of China of 1983. The said provision states that anything that is detrimental to socialist morals or customs or having other unhealthy influences cannot be granted a trademark in China. Zhang Chan, Assistant Judge in Beijing Intellectual Property Court, argues that trademarks for Coronavirus falls under Article 10, and thus should not be granted. Also, Article 11 of the 1983 Chinese Act converges with Section 9 of its Indian counterpart, and thus, the arguments advanced above can be considered applicable here. On a perusal of several IP jurisdictions, it can be discerned that IP offices across the world have shown an inclination towards rejecting ‘COVID-19’ or Coronavirus trademark applications.
Most of the ‘COVID-19’ and ‘CORONA’ formative marks that have been sought are in the examination stage currently. It will be indeed interesting to see what awaits once the examination reports of these applications are published. It is evident that several objections will be raised on the basis of the aforementioned ‘deceptive similarity’ and the confusion such similarity causes. Also, issues regarding Section 13 of the Trademark Act and the Drugs and Magic Remedies (Objectionable Advertisements) Act will be inevitably invoked.
However, the authors firmly believe that irrespective of the marketing-appeal these words may provide, no trademark should be granted for the terminology ‘COVID-19’ or ‘CORONA’ because of evident problems already highlighted above. Nevertheless, we are looking forward to the decision of the registry and interpretation of the judiciary in this matter.
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