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The COVID-19 pandemic – Has it had an impact on the protection and enforcement of trademarks?

1. The outbreak of the COVID-19 pandemic has caused disruptions of unprecedented proportions around the globe with lockdowns and partial movement restrictions. In Malaysia, the Movement Control Order (“MCO”) and Conditional MCO (“CMCO”) was implemented by the Malaysian Government prior to 10th June 2020.

Prosecution of trademarks

2. Amongst the businesses and services required to close temporarily during the MCO and CMCO was the Intellectual Property Corporation of Malaysia (“MyIPO”). As a result, trade mark and other intellectual property rights applications were partially put on hold and delayed. However, online filing of certain documents were allowed during MCO and CMCO.

3. MyIPO has been in full operation since a few weeks ago.


Actions before the Courts

4. Actions before the Courts were partially halted during MCO and CMCO. The Court’s e-filing system was in operation which allowed documents to be filed online.

5. High Courts and Subordinate Courts continued to hear urgent cases by conducting online hearings and a directive has been issued to allow some unchallenged interlocutory applications to be heard online starting from 4th May 2020. Further, in a truly historic move, the Court of Appeal successfully heard appeals via teleconference on 22nd April 2020. The proceedings were also live-streamed on the Courts’ official website.

6. As part of pre-cautionary measures, Courts have implemented online hearings whenever necessary even though CMCO has been lifted on 10th June 2020.


Coronavirus and COVID-19 related trademark applications

7. There has been a surprising rise of applications being filed for coronavirus and COVID-19 related marks as the world race to control the pandemic. For example, searches have revealed applications to register, amongst others, the following marks:-

    a) “” in Class 25 in the United States of America vide Trademark Application No. 88861600;
    b) “” in Classes 9, 10, 35, 42 and 44 in EU vide Trademark Application No 018221656;
    c) “CORONAVIRUS SURVIVOR” in Class 25 in the United States of America vide Trademark Application No. 88836091; and
    d) “ANTI CORONA CLUB” in Class 25 in Germany vide Trademark Application No.

 

8. While some may criticise such applications as being in bad taste in view of the loss of lives and the damage which has been caused to global economy, it is undeniable that it is within the right of traders to protect any mark which they may have created by filing applications for the registration for the same.

9. However, it is uncertain whether such trademarks would be allowed to proceed to registration. Depending on local conditions and sensitivities, an application for the registration of a coronavirus or COVID-19 related trademark could potentially be refused on the basis of the mark being offensive or contrary to morality. For example, there have been reports of the China National Intellectual Property Administration rejecting applications to register trademarks referring to Dr. Li Wenliang, the doctor who has been credited as being one of the first to raise concerns with regard to the COVID-19 virus.

10. Further, a trade mark application with reference to coronavirus or COVID-19 related trademark for medical equipment or services may not be allowed on the basis of lack of distinctiveness or that the mark is descriptive of the goods or services for which the mark is sought to be registered or it is against public policy to allow registration of such marks. An example of a mark which would likely face such an objection would be the mark “CoronaClean” for detergents for household and medical use which has been filed in Australia.

11. There has also been reports of requests being made for the “fast-tracked” examination of applications for the registration of trademarks related to the pandemic in China. This has prompted the China National Intellectual Property Administration to issue notices to address the malicious filing of marks containing the names of people involved in the epidemic and marks which are related to the virus, epidemic-related drugs and other marks related to the epidemic.

12. In so far as Malaysia is concerned, it would be hard to satisfy the threshold for expedited examination (i.e. fast track) of a trade mark as a request for expedited examination will only be allowed if:-

    (a) the request is in the national or public interest;

    (b) there are infringement proceedings taking place or evidence showing potential infringement in respect of the trade mark applied for; or

    (c) registration of a trademark is a condition to obtain monetary benefits from the government or institutions recognised by the Registrar of Trade Marks.

13. Therefore, it is imperative that traders be mindful of the potential pitfalls which they may face should they wish to register a mark. Should an application be provisionally refused, the applicant would need to prove that its mark is distinctive of the goods / services for which registration is sought.


Trademark infringement in the midst of the COVID-19 pandemic

14. In view of the highly infectious nature of the COVID-19 virus, consumer demand for personal protective equipment such as N-95 masks and disposal gloves as well as sanitisation products have surged substantially. There was shortage of such goods, in particular, disposal face masks, due to sudden increase in demand.

15. The high demand coupled with the ever-increasing fear of infection amongst the public has made it easier for unscrupulous traders to prey on members of public. This is particularly so in view of the fact that many traders have been forced to move their businesses online in view of the MCO, where unscrupulous traders would be able to take advantage of anonymity afforded by Internet.

16. In Malaysia, the Director of the Federal Commercial Crime Investigation Department, has stated that the Police has opened over 501 investigations in respect of complaints of fraudulent face mask sales since the MCO first came into force; which has resulted in an estimated loss of approximately RM 3.5 million. Most of the consumers who fell victim to the unscrupulous traders had dealt with the traders on social media platforms such as Facebook, Instagram, WhatsApp and Wechat.

17. The Ministry of Communications and Multimedia said that there has been a global alert on the sale of counterfeit face masks, substandard hand sanitisers and unauthorised antiviral medication online. The ability of traders to mask their identity, whether by deliberately providing a false identity or by cloaking technology such as Virtual Private Networks (“VPN”), have made identification and enforcement harder, more expensive and time consuming.

 

Promotion through creative branding

18. Despite the myriad of issues which have arisen in view of the COVID-19 pandemic, brand owners have managed to find ways to promote their goods in a creative manner during the pandemic. For example, a number of iconic logos have been redesigned to refer to the pandemic or promote the need for social distancing

19. Online trading and food delivery platforms such as Lazada, Zalora, Shopee, Grabfood and FoodPanda have been encouraging customers to utilise their contactless delivery and to spread the message for the public to stay at home by providing promo codes and using the hashtag #stayathome.

 

Conclusion

20. While the COVID-19 pandemic has certainly raised issues with regard to the protection and enforcement of trademarks, there are companies who have managed to find creative ways to promote their brands. With a combination of creative input and legal support, these companies may be able to re-emerge stronger than ever when the global health crisis finally ends.

 

Michael Soo

Managing Partner and Head, IP

[email protected]

Wendy Lee

Partner

[email protected]
 

Jaynthi Kanesarajah

Senior Associate

[email protected]

 

 

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