The first case of the new coronavirus in Brazil was confirmed in February 26, 2020, in Sao Paulo[1]. Our country since then has had to adapt to what is referred to as “a new normal”.
Given this new globe scenario, new consumer needs and habits took place. These needs and habits challenged many entrepreneurs to develop new business management strategies, mainly in publicity and sales through digital media.
Consequently, the registry of mark became even more important since the Internet and social networks are the main ways of advertising and selling products and services. According to Ebit/Nielsen findings, new consumers online went up by 13 million, in Brazil, in 2020 – the highest in the last 13 years[2].
This rise of online consumers is reflected in a significant increase in the volume of requests for registry of mark which the Brazilian Patent and Trademark Office (INPI) received in the same year (2020). The INPI is the sole competent federal agency responsible for registration of trademarks. According to data published by SEBRAE[15]:
“[…]” the volume of requests for registration before the INPI reflects a growth of 19% in micro and small businesses. In 2019, 254 thousand applications were filed before the INPI, of which 160 thousand were made by MEI (individual micro and small businesses). In 2020, 275 thousand applications for were filed, 126 thousand of which were from small businesses”. [3]
Due to the broad impact of the pandemic in 2020, it is no surprise that most searched word on google was “CORONOVIRUS” [4]. The terms “CORONOVIRUS” [4] and “COVID” were obviously seen as commercially exploitable as trademarks for products and services.
We carried out a study based on INPI data of the terms “COVID”/ “CORONAVIRUS” (Portuguese word for Coronovirus). The aim of our study was to analyze the impact of the pandemic and its legal implications within the sphere of trademark legality.
Through this study, we verified that between March 2020 and May 2021, there were 82 applications for trademarks using the terms “CORONAVIRUS” and “COVID”. Our objective was to protect products and services in diverse market segments. This brought up interesting questions, especially related to the possibility of a specific owner of trademark to have exclusive use of the above-mentioned terms in order to identify product or service, as long as such product or service were not in the health segment.
The INPI granted registration to trademarks with names of diseases, in the past, such as: CATAPORA (varicella, chicken pox) to identify publicity[5] and entertainment[6] and even permitted its use in identifying clothing [7]. Nevertheless, all of the above, refer to very old decisions.
Recent decisions over the last 24 months, show that the first application for the use of CORONAVIRUS[8], as a trademark in Brazil, was made in March 3, 2020 to identify the commercialization of, among others, “Chemical and Pharmaceutical Preparations”. The decision to reject this application was published in October 6, 2020, based on: (i) INPI Law, Article 124, item VI which states that the description of a trademark without sufficient distinctive elements; as well as (ii) pre-existing registration number 901655678 referring to the mark “CORONA” granted in April 12, 2012 to identify “chemical substances, textile materials and artificial resins”.
Since this rejection, the INPI has made other decisions granting registration for trademarks with the term COVID as part of name, as well as other terms to identify treatments, health care associations to combat COVID, apps, and even anti-slip carpets.
In April of 2021, the INPI granted registration for a trademark with the term COVID to identify alcoholic beverages, with the understanding that trademarks using this term in their name, per se, do not infringe on LPI Law, Article 124, item III.
“Article 124 – The following are not registrable as marks: (…)
III – expressions, figures, drawings or any other sign contrary to morals and good customs or which offend a person’s honour or image or are an affront to the liberty of conscience, beliefs, religious cults or to ideas and sentiments worthy of respect and veneration;
The INPI reiterated further, the need for the examinator to verify the distinctiveness[10], veracity[11] and legitimacy, as well as, the connotation which a term takes on when used with the intent of identifying products and services. Moreover, it highlighted that a term must never offend the sentiments of respect dignity or sacredness.
“Marks with the term “COVID” are not in and of themselves an infringement of item III of article 124, of LPI. In the analysis applying to this item the connotation of the term “COVID” when used for certain products or services should be verified that it is not used against ideas or feelings considered worthy of respect or sacredness. Furthermore, the registrability of a mark ought to be analyzed with respect to its legal requirements, such as: distinctiveness, veracity, and the legitimacy of the applicant. The possible application, specifically items VI and X, should to be evaluated with special attention to descriptiveness as potentially misleading in relation to products and services[12].
The federal agency INPI, however, denied an application[13] for mark ANTICOV-19 to identify “Clothes making”, based on LPI Law, article 124, item X, understanding that it was falsely identifying its use/quality[14]
“Article 124 – The following are not registrable as marks: (…)
X – signs that suggest a false indication with respect to origin, source, nature, quality or utility of the product or service to which the mark is directed;
Thus, what is or is not directly related to the products or services in request for registration of trademark defines whether there is a denial of application, or not, using the terms COVID or CORONAVÍRUS, as well as an analysis of a possible infraction as defined in LPI Law, Article 124, items III, VI, X and XIX.
Therefore, it is highly recommended that before filing a trademark application, using such terms, a trademark availability search of these terms be carried out.