IP Australia's Natural Immunity to COVID-19 Trade Marks

IP Australia has taken a hard line stance against trade mark applications containing references to COVID-19. Side stepping the normally lengthy window for overcoming objections, IP Australia is issuing immediate Notices of Intention to Reject trade mark applications for these marks. The Notice of Intention to Reject signals that the Examiner considers there is no further action the filer can take that will convince the Examiner to withdraw the objection, and limits the filer to filing a final response or requesting a hearing within only two months.

Key Points

• Australian Trade Mark Applications which contain references to COVID-19 are receiving objections on the basis they are scandalous, among other objections.
• IP Australia is also short circuiting the normal 15 month plus window for overcoming objections by issuing Notices of Intention to Reject in many cases.
• Applications for marks that only contain COVID-19 references are the most likely to receive early Notices of Intention to Reject.
• There is a question as to whether references to COVID-19 are legitimately scandalous in Australia and perhaps there may be a reasonable basis to challenge this objection. Nevertheless, the descriptiveness of the COVID-19 term is likely to remain an issue.

Filings for COVID-19 Marks

In response, IP Australia has taken the unusual step of immediately issuing a Notice of Intention to Reject these applications, concluding the marks are unregistrable and that arguments are unlikely to change their position and giving applicants just 2 months to respond. Normally, Applicants have 15 months to overcome objections and would be entitled to file multiple rounds of submissions before the office would consider issuing a Notice of Intention to Reject.

Number	Mark	Classes
2072950	CoronaClean	3, 5
2077634	COVID-19	16, 25
2077666	Coronavirus	41
2078868		3
2078885		41
2082196	Love in the time of COVID-19	16
2085850	Corona	28

Why are the COVID-19 Marks being rejected?

Based on a sample of the examination reports, provisional refusals, and Notices of Intention to Reject, it appears that IP Australia is primarily rejecting these applications under section 42 of the Trade Marks Act on the basis that registration of COVID-19 Marks would be scandalous or offensive to ordinary Australians “in view of the detrimental impact of the pandemic in Australia”.

Given Australia’s irreverent culture, trade marks are rarely rejected on the grounds that they are scandalous. However, this objection is more commonly seen in some Asian countries, particularly in relation to marks, which reference nudity or sexuality.

In addition to section 42, as one would expect it appears that a number of these COVID applications have received additional grounds of rejection, such as that ‘COVID-19’ is not distinctive as it is descriptive when used in relation to products or services related to the pandemic (medical supplies and services, cleaning products and services, etc).

Section 42(a) – Scandalous matter

From the cases we have reviewed, when a COVID application has received a Notice of Intention to Reject, it has been on the basis it contains scandalous matter under Section 42(a) of the Act. Judicial consideration of this ground is sparse and it largely falls to the plain meaning of Section 42(a) of the Act:

“An application for the registration of a trade mark must be rejected if: (a) the trade mark contains or consists of scandalous matter”.

The approach of the courts and IP Australia, appears to generally be whether the mark would currently be offensive to a portion of ordinary Australians with neither thick nor thin skin. It is a challenging balancing act considering what is, or is not offensive to the broader community. Decision maker Mr Myall effectively sets a perhaps unachievable Goldilocks standard in UK case Hallelujah Trade mark [1976] RPC 605 at [607]:

“… religious and moral standards are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have given a clear lead.  While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.”

Further guidance from IP Australia’s Examiner’s manual advises that while phonetic equivalents of swear words likes PHAR QUE are acceptable, overt phonetic equivalents like FUCT are not. Of course, some cases are easier than others, and trade marks containing personal abuse, racial or ethnic abuse, religious intolerance or abuse of the national flag are clearly scandalous.

Are COVID Marks Scandalous?

Given the broad effect of the pandemic on the community, there is likely widespread descriptive use by businesses of the term COVID/CORONAVIRUS in describing and promoting their products and services, from cleaning products, to face masks, to entertainment. However, based on our experience and online searches, such use does not appear to be creating upset or outrage in the community.

Even the Federal Government has pending applications such as COVIDSAFE (Nos. 2091935, 2091936, etc) which have objections but have not received Notices of Intention to Reject. This mark is the name of the government’s well known, if unpopular, mobile application COVIDSAFE yet there does not seem to be any public concern at this use of COVID.

It is reasonable to consider then that COVID Marks are not scandalous or offensive in and of themselves in the way swear words are typically considered to be. It is not as if the wide spread use of these terms by government officials, the media, or businesses is upsetting the community (beyond the weariness and fatigue of the pandemic persisting which many of us feel) which contrasts sharply with the reaction one might expect of a truly scandalous mark. One would expect there to be some reaction if government officials, media, and businesses were to use swear words or blasphemous statements as unapologetically as they reference COVID-19.

Overall, it is hard to see how a reference to COVID-19 with other words is in and off itself scandalous. Moreover, considering specific examples like No. 2078868or hand sanitiser and No. 2072950 CoronaClean for detergents and disinfectants, which are perhaps largely descriptive, it is hard to see how these marks are likely to be used in a way that is scandalous. Particularly at a level, that it is so clear that a Notice of Intention to Reject should be issued on that ground alone.

Are all COVID-19 Marks being rejected?

IP Australia is not taking this hard line approach with all trade marks that contain COVID-19 references. IP Australia tends to allow fairly independent decision making by their Examiners. So while a review of the Trade Mark Register suggests that Examiners are primarily taking this hard line approach of issuing the Notice of Intention to Reject for trade marks which only comprise a COVID-19 reference or only comprise that reference along with other descriptive words, the pattern is not consistent enough to formally draw this conclusion.

Some examples of COVID Marks, which the office has registered, are as follows:

Number	Mark	Classes
2091937		9, 42, 44
2099439	covid19-clean	35
2101141	C.A.V.E - Covid Assessed Venue of Excellence	41, 42
2106483	CovidPass	42
2115891	CovidSafe Air	11, 40
2147040	COVID 19 SENTINEL	1, 5, 42, 44

If there were a uniform approach being taken at IP Australia, it would be hard to see why No. 2099439 covid19-clean and No. 2115891 CovidSafe Air have not received a Notice of Intention to Reject, and yet No. 2072950 CoronaClean has received such a Notice. The only clear line appears to be that applications, which only refer to COVID-19 with no other material, appear almost certain to receive a Section 42(a) objection and a Notice of Intention to Reject.

Conclusion

While we maintain scepticism over the appropriateness of the Section 42(a) objection in relation to most if not all COVID Marks, it seems clear that a distinctiveness objection would generally be appropriate. In some circumstances, COVID-19 trade mark use which is potentially misleading might also be more deserving of receiving a Section 43 likely to deceive or confuse objection. While No. 2084582 CovidKey for “door openers, non-electric” would be unlikely to be covered by a distinctiveness or likely to confuse objection, it is equally unclear how such a mark for door openers is scandalous and deserving of the Notice of Intention to Reject that it has received.

Regardless of the merits of the scandalous objection, it is clear that many filings for COVID Marks, particularly those which contain no other elements, may have been filed in bad faith by opportunistic parties hoping to somehow profit from a registration for “COVID-19” and should not be registered. Taking swift action by issuing Notices of Intention to Reject sends a clear message and removes these applications quickly from the register. Ultimately, by denying registration to many of these COVID Marks, IP Australia is preventing unproductive disputes over clearly descriptive use and potentially (intentional or unintentional) abusive uses of these registrations.

Moving forward, it is worth keeping an eye out to see if this might signal a shift in the practice of issuing Notices of Intention to Reject at IP Australia. Perhaps they may start issuing these notices much earlier to hopeless applications, particularly for nuisance applications, which remain common on the Register.

How we can help

If you would like to speak to us about intellectual property, or any other matter, please contact Michael Cassidy, Gina Tresidder, Kate Littlewood or a member of our Intellectual Property team.

If you’d like to stay up to date with Russell Kennedy Alerts and Events, please sign up here.