Coronavirus, the mark of an era: an analysis from the point of view of industrial property in Brazil

After the outbreak of the new Coronavirus (the cause for the COVID-19 disease) worldwide, there has been intense discussion on several legal issues related to the pandemic, such as the need for patient data protection and the patentability of technologies and inventions aimed at combating the virus. However, it is clear that not only these areas related to intellectual property are in vogue. Around the world, several market players have sought to obtain trademark registrations for the terms "coronavirus", "COVID-19" and others related to the global phenomenon.

From a simple analysis of the World Intellectual Property Organization (WIPO) database, it can be seen that, since the beginning of February 2020 to the present date, more than 40 trademark applications containing one of these expressions have been filed. In Brazil, on the other hand, there is only one application for the term "Coronavirus" published so far, as it can be seen in the Brazilian Trademark and Patent Office (BPTO) database.

Thus, the question arises: is it possible to register the term "Coronavirus" or others linked to the pandemic as a trademark in Brazil? The purpose of this article is to contribute to the debate on this issue and to point out relevant legal aspects for such analysis. To do so, it is necessary to address, albeit briefly, what is the scope of protection conferred by a trademark registration and what are the functions that the trademark performs (or at least should perform).

 

In Brazil, trademark matters are regulated by Law 9279/96 (Industrial Property Law – IPL), which provides that only visually perceptible distinctive signs are registrable (Art. 122, IPL). As a rule, protection is obtained by granting the registration issued by the competent agency, the BPTO (Art. 129, IPL), and covers the entire national territory. As a result of this title granted by the BPTO, the owner acquires exclusivity over the trademark and may prohibit the use, without authorization or consent, of the trademark sign by third parties.

Nevertheless, it is important to emphasize that not every sign can be registered as trademark and that the protection resulting from a registration is not unlimited. The reason behind this is precisely the fact that, when a trademark is granted, a monopoly of the sign is granted to a company or individual, representing a true exception to the constitutional principle of free competition, provided for in the Brazilian constitution.

Thus, by establishing restrictions on the registration of certain signs, the legislator prevents the granting of such monopoly in cases that do not justify it. To this end, Article 124 of the IPL lists a series of situations in which the trademark application must be rejected by the BPTO, which are often intrinsically related to the functions of the trademark itself. Such list covers both absolute and relative grounds for refusal.

Trademarks play several simultaneous roles. In addition to simply identifying the product or service, the trademark has as one of its main functions that of distinguishing the products or services of a company from the others existing in the market, as can be seen from reading Article 123, I of IPL. In addition, a trademark is also intended to attest to the origin and quality of the specific product or service. Thus, through the creation of a trademark and its branding (such as its concept, its values) a relationship of trust is established (in terms of quality and reputation, for example) between consumers and the respective companies.

With these considerations in mind, we shall analyze now the possibility of some applications (referring to the term "coronavirus" and others related to the disease) being granted by the BPTO.

In the first hypothesis, if the trademark is filed for a class of health-related products and services, item XVIII of Article 124 IPL, which prohibits the registration of a technical term used in science to identify a related product or service, would be a potential obstacle to granting the registration.

Furthermore, it is possible that the competent agency (in Brazil's case, the BPTO) understands that, regardless of the class, the sign is of common use and lacks distinctiveness, and is therefore not subject to registration, according to Article 124, VI, IPL. This is because the term "coronavirus" has already been somewhat vulgarized due to the current pandemic that is devastating the world, since it impacts it in the most diverse ways.

Nevertheless, one must consider the situation in which the sign under analysis has other elements, and not only the term "coronavirus". In such cases, as the case law correctly recognize, it will be necessary to analyze the sign as a whole in order to determine if it is distinctive or not, always taking into account the class and specification claimed.

We shall take, for example, the application already filed before the BPTO, for marketing disinfectants and pharmaceutical preparations. In this case, the sign has only the term "Coronavirus" and has no other element, either word or visual, which allows us to conclude that the trademark has a low degree of distinctiveness. It is likely that the BPTO, when examining this application, will reject it for the following reasons: (i) the sign is common or vulgar, especially considering the class applied and its specification; (ii) the sign is a technical term in the scientific area; (iii) the sign is not distinctive and therefore does not fulfil the main functions of a trademark – that is, by means of such a trademark it is not clear to the consumer the origin of the product and, consequently, its quality and distinctiveness compared to other existing ones.

In another example, the trademark application can be denied for other reasons, see application made in the United States for the trademark "FXCK CORONAVIRUS". Although the term "FXCK" does not exist in the English language dictionary, it is easy and quick to associate such a sequence of letters with the expression "FUCK", which is a slang word in the English language. If this application had been filed in Brazil, it would be possible for the BPTO to reject the application based on the argument that it is contrary to morals and good customs (such prohibition is found in Art. 124, III, IPL).

Moreover, the rejection of the application may result from the risk of confusion or association with an already registered trademark, which is foreseen in Art. 124, XIX, IPL. After all, in certain classes of products or services, some companies have already consolidated the use of partial terms contained in the expression "coronavirus”. Thus, at first, the chances of success (in Brazil) of an application for the word mark "coronavirus" to identify beers or showers would be very low, given the already existing trademarks for the showers "Corona" and for the worldwide famous beer "Corona".

Therefore, it can be concluded from the brief analysis above that many similar cases of applications that may be filed in Brazil will probably be rejected by the BPTO because such signs do not fulfill the essential role of a trademark (that of identification of origin, based on its level of distinctiveness) and, consequently, because they are seen as merely descriptive, common or even vulgar signs, since the repercussion of the pandemic has trivialized the use of the terms in the most diverse areas of commercial activities.

It is certain that, as already mentioned, the analysis must always evaluate the trademark as a whole – considering the set of its elements – which may lead the BPTO to grant some registrations that contain the expression "Coronavirus" or "corona," for example, mainly in future circumstances, where the pandemic is no longer at the center of attention of the public and market. A compelling example of this possibility is the existence of several registrations before the BPTO for trademarks that use the term "gripe” (which means “flu” in Portuguese).

In any case, the applicant or the owner of a trademark containing any of these terms, should not be given the (false) expectation that he/she will have the exclusive right to use such signs, since the low degree of distinctiveness of such marks is likely to result in registrations for signs that could be considered "weak" and, thus, that should bear the burden of peacefully coexisting in the market with other signs containing the same expression, even partially.