The Authors' Take - Trademarking “COVID” and “Coronavirus” in the United States: An Empirical Review

Trademarking “COVID” and “Coronavirus” in the United States:

An Empirical Review


by Irene Calboli


Since its global debut in early 2020, the COVID-19 pandemic has led to a tsunami of trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. In this Article, I examine the applications that have been filed with the United States Patent and Trademark Office until the end of 2020. In particular, I present a comprehensive set of data regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period. Based on these data, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic-related products, but also for unrelated and promotional products. Individuals and small businesses were the largest groups of filers, and over two thirds of the applications were based on intent-to-use rather than use in commerce. The number of filings closely mirrored the development of the pandemic during the various months of 2020. In addition, when compared with previous filings for signs including terms related to past sensational events, including pandemics, the numbers of “COVID-19 related” applications were much higher than any previous filings. This confirms the catalyst effect of the COVID-19 pandemic also on the trademark application system, even though a large number of these applications may ultimately not be registered as several signs may be found to be generic or descriptive—in particular for medical and pandemic-related products—or deemed not to function as trademarks—for example if they are used as ornamentations on promotional products. The signs may also be found to be deceptive if they imply a specific cure or solution, when this may not be accurate. Still, the data presented highlight several interesting aspects of the phenomenon of “filing sensationalism,” even though it remains difficult to understand what triggered this large number of filings precisely with respect to the COVID-19 pandemic--a time that we all hope to put behind in the nearest future.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

In conversation with ... Prof. Dr. Annette Kur


The editors of the
 Journal of Intellectual Property Law & Practice (JIPLP) were very honoured when Prof. Dr. Annette Kur accepted their invitation to join the journal’s editorial board a couple of years ago. I too was delighted when Annette agreed to talk to me recently for the second in a new series of conversations with leading figures in the IP community…

The effects of chance or coincidence – perhaps serendipity? – were a recurrent theme of our conversation, a retrospective survey of Annette’s distinguished career. With characteristic modesty, Annette described how she first developed an interest in the Nordic countries, leading the Nordic Department at the Max Planck Institute for Innovation and Competition in Munich. Annette first arrived at the Institute, drawn initially by the favourable conditions in which to write her PhD, not with a background in IP, but from a competition and consumer protection perspective. This desire to protect consumers and the socially weaker has persisted ever since. It was Annette’s (rudimentary to begin with) knowledge of the Swedish language that was instrumental in establishing her at the Institute – the first defining moment of her illustrious career. Annette proceeded to master (passively) not only Swedish, but also Norwegian and Danish, and spent significant amounts of time translating, which was a key task in the country departments at the Institute. The Nordic community became and remains precious to Annette’s heart.

 

Annette referred to the Institute as a microcosm of the wider IP community, which also holds a special place for her. It is unique. A small community in the early days, the Institute became a hub for IP internationally and is still a family. Annette described the appeal of IP intellectually: copyright and its affinity with the arts, and patents, though very different, still connected with ideas. Annette loves the playfulness and flexibility of the IP system. Its rules may be rigid, but at their core is a genuine dynamism as nothing is cast in stone. As Annette put it, “everything moves”. It struck me that Annette, as a true comparativist, enjoys the intellectual stimulation provided by contrasts; she compared the German system, with its rigidity and hierarchy, with the Nordic academic landscape and its non-hierarchical style of communication. Within the Max Planck Institute, as people come together from so many different countries, it is impossible to impose a strict hierarchy or a strict dogma. According to Annette, this accentuated the openness and playfulness at the Institute, especially in the Nordic Department. 

 

Known as a guiding light in design law, having been instrumental in the creation of the system of Community designs, Annette shared with me how further serendipity influenced the next phase of her career. Having previously focused on unfair competition and trade mark law from the consumer’s point of view, Annette was invited by the then director at the Institute to participate in a new interesting research project. This was subsequently adopted by the Commission as a blueprint and European design law was established. With typical self-deprecation, Annette attributes her then being viewed as a “design person” to several more amazing coincidences, and even confusion between the Hague Conference on Private International Law and Hague – the International Design System!

 

As Annette said, “Coincidences play a role in influencing one’s life and one’s academic output”.

 

In a final strange coincidence, I was lucky enough to take delivery of the recent festschrift published in honour of Annette by Cambridge University Press. This arrived by chance about an hour before we had arranged to speak and provided me with the opportunity to read more about Annette’s history and to note some of the distinguished names whose chapters have been included in the book, a further sign of the high esteem in which Annette is held. Prof. Eleonora Rosati will shortly be reviewing the book, and readers can look forward to reading her review in a forthcoming issue of JIPLP.

The Authors' Take - Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims

Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims


by Sara Cavagnero


As public interest in sustainable fashion rapidly surges, trade marks are playing a prominent role in promoting eco-friendly products and engendering consumer trust. PRADA registered the trade mark “Re-Nylon” to signal its collection based on the regenerated-nylon yarn ECONYL, while the fast-fashion giant H&M relied on the trade mark “CONSCIOUS” to identify products made with recycled or organic materials.

These IP assets allow companies to transfer information on the so-called credence attributes, which empower consumers to select products reflecting not only their instrumental preferences but also their values. However, a missing piece of the puzzle relates to the correlation with sustainability commitments, given that the information provided is not neutral but framed by the brand and, thus, potentially contested.

The risks are clearly outlined in the report released in January 2021 by the European Commission, which revealed that 42% of green claims made by garments, cosmetics, and household companies on their websites are “exaggerated, false or deceptive”, and in 59% of cases not supported by any evidence.

The systematic assessment of 12.335 trade marks including 22 sustainability-related vocabularies filed in the United States, the European Union, and at the international level from 2000 to 2020, revealed that sustainability-related trade marks represent a modest portion of the overall number of registrations in classes 23, 24, and 25, but the growth figures are rising, in line with the general filing trends.

The untouched primacy of the term “green” suggests that corporate strategies are mainly based on green marketing principles, signalling, since the late 1980s, the positive correlation between eco-friendly shade or wording in visual branding and consumers’ judgment about companies’ actions.

Furthermore, by confirming that sustainable trade marks are largely decoupled from sustainable corporate practices, the research results validate the idea of expanding the existing taxonomy of greenwashing sins, by identifying a new form of disingenuous communications, conveyed via individual trade marks.

Still, this proposal is not flawless. Indeed, the IP regulatory framework is ill-adapted to monitor sustainability claims conveyed through individual trade marks and the misleading advertising regulation does not appear to be unfolding its full potential.

Potentially, instead, a more regulated approach, inspired by the food sector, may help to curb disingenuous corporate practices conveyed via trade marks.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - A critical review of intellectual property rights in the Kenyan tea sector

A critical review of intellectual property rights in the Kenyan tea sector


Agriculture remains the most important economic sector in much of Sub-Saharan Africa, providing over 50% of overall employment, so the acquisition and use of intellectual property rights (IPRs) in the sector can have wide-reaching effects. In Kenya, tea (primarily in the form of bulk, dried leaves) is the largest export product by value, and is a major source of income for hundreds of thousands of smallholder farmers. In addition to the economic benefit, tea (unlike coffee) is widely consumed in Kenya, and has significant cultural importance.

With relatively active patent, trade mark, and copyright offices, a functional plant variety protection (PVP) regime, and membership in the Africa Regional Intellectual Property Organization (ARIPO), Kenya is home to numerous tea-related IPRs held by both foreign and local entities in government and the private sector. The Kenyan tea sector is therefore targeted in this paper as a case study for exploring various aspects of the sectoral use of IPRs.

Throughout the 20th century, foreign (i.e., non-Kenyan) entities were responsible for a majority of the activity in tea-related IPRs protecting innovation (i.e., patents and PVPs). This appears to be shifting in recent years toward more ownership and participation by local entities. Furthermore, the focus of innovation is more diverse for local applicants. Whereas foreign entities largely seek to protect tea plants and methods of processing tea plants, IPR applications from local entities cover a wider spectrum of the value chain for tea and tea-related products.

In contrast, trade marks have always been predominantly used by local entities. Tea-related trade marks include some that use the names of geographic locations. Kenya does not have a Geographic Indication (GI) system, but both economic and agricultural factors point to a situation that might be ideal for GIs.

A surprising finding is the almost complete lack of any tea-related IPRs held by non-Kenyan, Africa-based entities. Although seven of the top 20 global tea producing nations are in Africa (including all five of the countries in the East African Community), this study found just a few trade marks held by entities in Egypt, Mauritius, and Uganda. Africa-based entities do not hold any tea-related patents, PVP certificates, or national plant variety registrations in Kenya. Such findings may be important for the ongoing negotiations for the African Continental Free Trade Agreement.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Final decision from a UK Community Design Court clarifies how to interpret a registered design

Final decision from a UK Community Design Court clarifies how to interpret a registered design


The decision in Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020) relates to a design for ballerina shoes, which an informal, women's slip-on shoe, with a relatively thin, flexible sole and a wide, low heel. This decision is the last judgment handed down by a UK court acting as a Community Design Court. David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, was faced with the task of construing what was protected as the Registered Community Design.


The key feature of the shoe which the Claimant developed was that the upper was made of knitted yarn made from recycled plastic. However, the Defendant denied that the cross-hatching in the images of the designs indicated a knitted meshwork fabric.

In determining what constitutes the claimed design, the judge rejected the submission of the Claimant that he should take into account a shoe made to the design. This would clearly risk introducing features extraneous to those claimed in the registration. As the judge pointed out, whilst superficially attractive, this argument is circular – to determine if the proffered shoe is indeed a shoe made to the design, one first needs to assess what the registration means.

The judge also rejected the submission of the Claimant that he should consider the description of the claimed design in the US design patent application from which priority was claimed. It cannot be correct to import subject matter from a priority application in this manner, in particular when the effect would be to circumvent Article 36(6) of the Community Design Regulation which stipulates that the description of a RCD does not affect the scope of protection.

This leaves only the images of the registered design to define what is claimed in the registration. The judge scrutinised closeups of the images on the EU IPO website, and concluded that the patterning shown on the upper depicts a knitted fabric. This led to the conclusion that the RCD possessed individual character, as neither of the pleaded prior designs had knitted uppers (both were suede).

The differences between the Defendant’s shoe and what the judge construed as being protected by the RCD (such as a tab at the back of the shoe and a decorative button) were held to be minor, so the Defendant’s shoe was held to infringe the RCD.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer


In November and December 2020, the EU Commission has presented a triad of proposals concerning data governance, the regulation of gatekeepers in digital markets and the regulation of digital services (namely including an ambitious, yet considerate, reform of provider liability in Europe as well as the introduction of certain duties of diligence in particular for very large platforms). Specifically, this Digital Services Package respectively comprises a proposed Data Governance Act (DGA), Digital Markets Act (DMA) and Digital Services Act (DSA). Altogether, these bills represent the hitherto most ambitious and broad regulatory project in the field of data and digital services regulation worldwide.

While the (rather heterogeneous) DGA as well as the DSA will also have to be critically discussed in detail (and partly are in the paper), immediate attention has to be paid to the fundamentals of the DMA Proposal, namely, the necessary discussion of its legal basis, objective and context. To put it in a nutshell, the Proposal represents a hybrid approach to specific regulation of gatekeeper platforms, which comprises prominent elements of competition law as well as certain elements of unfair practices regulation and some other objectives (such as the efficient enforcement of certain rights relating to protection of personal data). Taken together, most of this makes perfect sense as a European Magna Carta for businesses’ and customers’ competitive freedoms vis-à-vis core platform intermediary and infrastructural services. Practically, in its current form, the proposal would effectively apply to the GAFAM-companies and a handful of further gatekeeper platforms.

However, notwithstanding the substantive competition law elements within this regulatory approach, the Proposal is only based on Art. 114 TFEU as an instrument of internal market harmonization. Against this background, presently, the main fundamental weakness of the Proposal concerns the integration in the context of or at least a more specific co-ordination with European and national competition law. This has practical consequences since sufficiently consistent and specific provisions on coordinating public enforcement of the Commission on the one hand and of the Member States’ authorities (in particular on the additional basis of competition law) on the other are lacking in the Proposal. In fact, this latter more practical aspect is partly linked to the former more fundamental aspect, since contextual integration in the realm of competition law (and consequently the use of Art. 103 TFEU as an additional basis for the Proposal) would allow to make use of the European Competition Network under Regulation 1/2003 for the public enforcement of the DMA Proposal’s provisions in order to efficiently coordinate EU and national enforcement, based on both, the DMA Proposal and EU or national competition law. Apart from that, a European legal framework for private remedies and enforcement in regard to the obligations laid down in the Proposal seems of paramount importance, since otherwise there is a considerable danger of disharmonization and inefficiency in regard to diverse or lacking private remedies according to the different Member States’ respective national contract, tort and unfair competition laws.

Make no mistake: The Magna Carta in many ways was a document of the weakness of King John of England in enforcement of his power against the rebel barons. Issues of public and private enforcement will also be the crucial tie-breakers for making the DMA Proposal a future success in practice – thus they should be addressed comprehensively from the start.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

Free content in honour of the INTA 2020 Annual Meeting

In honour of the INTA 2020 Annual Meeting, OUP has made available some specially-selected free content. This features several JIPLP articles, along with chapters from key OUP books, including Copyright and the Court of Justice of the European Union by Eleonora Rosati and Enforcement of Intellectual Property Rights in Africa by Marius Schneider and Vanessa Ferguson. The featured content will be free to read until 7 December 2020, so do take a look! See here for more information! 



The Authors' Take - Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum

Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum 

by Eugene C Lim 

Artificial intelligence (AI) technologies have triggered a dramatic paradigm shift in how we conceive of authorship and creation. Intelligent machines, such as those powered by the new GPT-3 neural network technology, are capable of generating human-like creative expressions, composing text, performing translations and producing other creative outputs once thought to be beyond the ability of computers. 

This article focuses on intelligent applications (or “creative avatars”) that are programmed to replicate the style of a human author (such as Shakespeare, Rembrandt or J.K. Rowling), and the regulatory challenges flowing from the generation of such works. The challenges surrounding the production of such content relate not only to questions of ownership and authorship, but extend to issues of how, if at all, these works can be treated as copyrightable subject matter. 

While much of the literature in the field has proposed significant modifications to traditional copyright rules to accommodate the emergence of AI-generated content, this article highlights the limitations of relying on copyright law in regulating rights in AI-generated derivative works. In developing this argument, the article adopts a novel approach by suggesting that interim solutions, in the form of alternative business and technological models, can be found outside of the “copyright box”. In particular, the article proposes a consent-based contract framework, featuring digital watermarks, Creative Commons licences and blockchain technologies, as part of an interim solution to regulate rights in relation to works generated by “creative avatar” programs. It is suggested that existing contractual and technological tools, drawn from current practices in the software licensing and cryptocurrency industries, can be useful to stakeholders in the AI industry, especially in the early years of emerging neural network technologies. In this regard, the article offers a utilitarian justification for the proposed consent-based framework by explaining how it can help to facilitate the dissemination of AI-generated derivative works in the absence of clearly-defined copyright rules, and promote the eventual enrichment of the public domain. 

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

In conversation with... Etienne Sanz De Acedo

In conversation with… 

Etienne Sanz de Acedo, CEO of the International Trademark Association

 


In the first of a new series of conversations, I recently caught up with INTA’s CEO, Etienne Sanz de Acedo, to discuss plans for the upcoming virtual meeting and to hear Etienne’s thoughts on the current IP landscape and the Association’s key policy priorities. The background of the current pandemic was never far from our conversation, but Etienne, ever the optimist, was always keen to highlight 
opportunity and appears to be facing the situation with calm resolve. 

Consumer trust and behaviour and how these have evolved since the start of the pandemic were a key theme of our conversation. According to Etienne, internet usage is expected to rocket by 160% among new or low frequency users alone, whereas consumers are becoming more frugal in their consumption with a shift in focus towards home and family. The online marketplace will inevitably continue to grow, but consumers will increasingly seek to engage with transparent, fair and ethical suppliers – a major consideration for brand owners and their advisors. It seems that the pandemic is either exacerbating or accelerating trends that were already apparent, including increased consumer fatigue around certain brands and trade marks. Consumers are benefitting from better access to information, which is aiding their desire to interact with brands whose ethos lends itself to a relationship of trust and transparency. It is no longer enough for brands to be seen to talk; they also need to act.

We also discussed brand restrictions: advocating for the right of brand owners to use their trade marks and related IP rights where governments seek to prohibit, misappropriate or significantly restrict those rights. Tobacco plain packaging is the most obvious example, but this also now affects other products such as infant formula, and sugary snacks and beverages. There is unease that a desire to address public health concerns has led to unwanted side-effects, impinging on consumer choice, impeding market competition and, perhaps most worryingly, benefitting counterfeiting and other illegal trade. Such restrictions inevitably erode brand value and arguably restrict freedom of expression. Whilst proponents of such measures argue that their aims are beneficial in seeking to reduce exposure to and use of products and services conventionally deemed to be unhealthy, INTA maintains that legislation and regulation restricting branding and use of trade marks must be driven by clear and convincing evidence of efficacy. They support balanced regulation that addresses public health concerns whilst respecting private property rights.

And finally, the burning topic of the Annual Meeting: education, advocacy and business development form INTA’s DNA and the meeting plays a key part. This year would have marked the twentieth anniversary of my first INTA Annual Meeting in Denver, Colorado, in 2000. Sadly, the meeting planned for April in Singapore was not to be and the 2020 Annual Meeting will be held virtually in November. For me, the elephant in the room was always the question of how to tackle diverse time zones but, as Etienne explained, INTA has addressed this with a three-pronged approach. Sessions are mainly timed to start early in the morning on the US East Coast, allowing for the largest number of attendees to participate at a comfortable time. There will also be live sessions in China standard time zone in Mandarin and English, plus on demand sessions and “Watch Parties”, allowing registrants to view recorded sessions with interaction via live chat. 

 

I look forward to catching up with many familiar faces over the virtual platform and thank Etienne for taking the time to share his thoughts with our readers ahead of the meeting. As has been customary in previous years, OUP will soon be launching a free INTA collection of content, including several key articles from JIPLP, so keep an eye out!

 

Sarah Harris

Managing Editor, Journal of Intellectual Property Law & Practice

Reminder: JIPLP Special Issue on GIs

A few months ago we announced a Call for Articles for our forthcoming special issue on Geographical Indications (GIs), which will be published in 2021.

We would like to remind interested authors to submit articles in the range of 3,500-6,000 words on a topic of their choice within this theme for consideration for publication in JIPLP. The issue will focus on several aspects of GIs with specific emphasis on recent developments in Europe and at the international level. Submissions addressing the topic from a comparative perspective are also welcome.

Relevant articles must be submitted through the online portal, be in accordance with JIPLP house style, and carry the indication that they are for consideration for the special issue of Geographical Indications.

The deadline for submissions is Monday, 30 November 2020. No late submissions will be considered for this special issue.

For authors interested in discussing informally the topic of a possible contribution, please email the Editors of this special issue, Eleonora Rosati and Irene Calboli, and/or Managing Editor Sarah Harris. 

The special issue will be available in complimentary open access for a limited period of time after publication. The editors are also considering the possible organization of a conference/meeting with the authors of the special issue in 2021 after the special issue has been published.