Covid-19: Intellectual property and marketing law developments
May 01, 2020 | 6 min read
Intellectual property rights and marketing strategies continue to play an important role as businesses adapt to these challenging times.
In this FYI we cover some of the interesting and unusual news and developments we have seen in New Zealand and elsewhere.
Summary
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IP: Trade mark applications of questionable taste
There has been a worldwide flurry of trade mark applications filed by businesses wanting to capitalise on Covid-19. Some of these trade marks are likely to be for goods and services targeted at battling the pandemic. But a large proportion of these trade marks are of questionable taste, and are probably only ever likely to appear as slogans on t-shirts or bumper stickers.
In New Zealand, there are currently four trade mark applications incorporating the word “COVID”. This includes applications for “COVID-19 2020” and “New Zealand 100 percent covid free”, both for clothing and retail or advertising services, and an “Anti-covid19” logo for antibacterial preparations.
Under New Zealand’s Trade Marks Act 2002, trade marks are not registrable if they are likely to offend a significant section of the community, if they are descriptive or non-distinctive, or if use of the trade marks is likely to confuse or deceive. It therefore remains to be seen whether any of these applications are accepted for registration by the Intellectual Property Office of New Zealand.
By comparison, the United States Patent & Trade Mark Office (USPTO) has received over 160 applications for trade marks incorporating “coronavirus” or “covid”. Examples include “I SURVIVED COVID-19”, “FVCK COVID-19”, “party like it’s covid”, “Club Covid”, “#CORONAVIRUS”, and a “WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS” logo. In recent years, decisions of the Supreme Court held that the provisions under the Lanham Act preventing registration of disparaging and scandalous marks were in violation of the First Amendment. So it will be interesting to see how the USPTO approaches examination of these applications.
Meanwhile, the China National Intellectual Property Administration issued a notice stating that it would crack down on malicious trade mark applications filed in relation to the pandemic. Subsequently, it announced that hundreds of trade mark applications in China relating to Covid-19 had been rejected.
These rejections appear to be on the basis of the China Trade Mark Law which prohibits registration of trade marks that are “detrimental to socialist ethics or customs, or [have] other unwholesome influences”. Rejected applications reportedly include a Chinese translation of “Wenliang Knew First” (a reference to Dr Li Wenliang, credited as the first person who first raised alarm about Covid-19, and who passed away after contracting the virus) as well as other marks incorporating Wenliang’s name, and marks incorporating Chinese translations of “Huoshenshan” and “Leishenshan” (the names of two hospitals specially built in Wuhan to care for patients suffering from Covid-19).
Advertising: Insulting a virus
New Zealand’s Advertising Standards Authority (ASA) received a number of complaints regarding a television advertisement containing the phrase “COVID-19, ya dick”. The informational advertisement produced by New Zealand’s Ministry of Health featured high profile New Zealanders, including Dame Valerie Adams, Taika Waititi, and Jordan Watson (a social media personality and creator of the “How to Dad” video series on YouTube). Each person in the advertisement makes a statement that forms a message about the seriousness of Covid-19, and the importance of being calm and uniting to fight against the virus. Mr Watson’s contribution to the message was “COVID-19, ya dick”, perhaps expressing the sentiments of many New Zealanders.
While the complainants were generally supportive of the advertisement and its intent, they took issue with the use of the word “dick”. One complainant argued that use of the word was offensive and unnecessary.
The Chair of the ASA’s Complaints Board noted the complainants’ concerns. But the Chair went on to confirm that the advertisement was in the nature of an advocacy advertisement from the Government as a public service announcement. The Chair also observed that the advertisement was aimed at a wide range of New Zealanders about the seriousness of fighting the impact of the pandemic. Referring to the Broadcasting Standards Authority’s “Language that May Offend in Broadcasting” report from 2018, the Chair noted that the term “dick” ranked at number 25 on the list of the 31 most unacceptable words or phrases in broadcasting.
Overall, the Chair determined that the use of the term “ya dick” did not reach the threshold to cause serious or widespread offence, and therefore there were no grounds to proceed with the complaints.
Advertising: Misleading product claims and scams
Sadly, we have seen examples of businesses taking advantage of fears and anxieties by misleadingly marketing products and services that allegedly prevent, treat, or cure Covid-19. Fortunately, regulatory authorities have acted quickly to respond to these issues.
The ASA has issued decisions relating to advertisements making claims about various health products and homeopathic remedies being effective in treating or preventing Covid-19 infection. In three of these decisions, the ASA ruled the complaints as settled because the advertisements in question had been removed.
New Zealand’s Ministry of Health reportedly investigated a post on Facebook made by a New Zealander, claiming that if someone has tested negative for Covid-19 then they could safely mix with other people. The post used the same look and feel of the Government’s own public service advertisements, and its content contradicted the Government’s rules imposed during the lockdown. The post was later removed. The Ministry reportedly obtained advice from Police, although the Police decided not to take any action in relation to the post.
New Zealand’s Financial Markets Authority (FMA) also warned the public about misleading health insurance services following the FMA’s successful removal of two misleading advertorials featured on WeChat. The advertorials cited costs for Covid-19 hospital care in China as allegedly being up to NZD250,000, and recommended that people in New Zealand should get health insurance to avoid the financial risk. The advertorials failed to mention that emergency testing and treatment of Covid-19 is free in New Zealand as it is covered by the public health service.
In Australia, the Therapeutic Goods Administration (TGA) has imposed a AUD25,200 fine on Peter Evans Chef Pty Ltd for breaches of the Therapeutic Goods Act 1989. The TGA received a number of complaints about a Facebook live stream run by Peter Evans Chef Pty Ltd, claiming that its BioCharger food processing device could provide therapeutic benefits in relation to the “Wuhan virus”. Any claim that references Covid-19 is a restricted representation under therapeutic goods legislation, and the TGA is taking a firm stance on such claims given the heightened public concern. The TGA has also recently published a warning to advertisers and consumers about illegal advertising relating to Covid-19.
See our recent article on issues for businesses to be aware of when marketing health products in the context of the pandemic.
Finally, the FMA also warned the public about investment scams exploiting uncertainty caused by the pandemic.
IP: A rise in counterfeit medical products
The rise in demand for medical supplies has correspondingly seen a rise in counterfeits. Under Operation Pangea XIII, police, customs and health authorities from 90 countries took part in collective action against the illicit online sales of such products. The operation resulted in the seizure of thousands of counterfeit and substandard face masks and “coronavirus” medicines. However, Interpol warns that this is merely the tip of the iceberg.
Businesses and consumers should therefore remain vigilant when sourcing medical products.
IP: Governmental use of third party intellectual property
In many jurisdictions, including New Zealand, governments have certain legislative powers allowing them to use third party IP rights. These powers are often limited to use of the IP in extreme circumstances and emergencies, such as for the purpose of national security or public safety that would apply in the current circumstances. However, the rights available to governments in some territories have not gone far enough and they have had to enact emergency legislation to increase the scope of governmental use of IP rights to be able to respond to the pandemic.
Canada is one such territory, which recently introduced the Covid-19 Emergency Response Act. The new legislation amends, amongst other things, Canada’s Patent Act to authorise the government’s use of patented inventions necessary to respond to a public health emergency of national concern. The new law also entitles patent owners to “adequate remuneration” from the government relating to such use.
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