Maria Smith and Andrew Sim | 23 April 2020
COVID-19 and Intellectual Property: Navigating the evolving brand issues
Speakers
Maria SmithHead of Trademarks
Practice
+852 2846 2151
maria.smith
@bakermckenzie.com
Andrew SimPartner
+86 10 65353916
andrew.sim
@bakermckenzie.com
Agenda1 Trends already becoming entrenched
2 Considerations for brand protection and maintenance under COVID-19
3 Advertising / Marketing Issues
4 Advertising / Marketing Examples
5 Q&A
As always, strong correlation between crises and innovation
Social distancing and isolation have led us to completely reinvent our
daily lives and routines-aided by technology
After this is over, a new consumer will emerge
This new consumer will be looking to brands to help define the new
world
4
Trends Emerging From the COVID-19 Pandemic
Hyper-connectivity and a virtual experience economy
Technology-enhanced experiences
Virtual shopping a reality
Growth in e-commerce and digital marketing
Delivery and pick up options
6
Convenience
Self-checkout solutions
Food and food safety
Sustainability
Wellness and Health
Hyperconnectivity and the rise of ecommerce necessitate a robust digital brand
protection strategy
New threats to cybersecurity, new listings of counterfeit goods
Rise of online scams
Protect digital content
Protection of new IP
Protection for online retailing
Redesign of logos
7
What do these trends mean for brands and marketing strategies
Marketing Opportunities
Building brand reputation by doing the right thing
Consumer expectations
To do everything possible to protect the well-being and financial security of their
employees and suppliers.
They want brands to shift to producing products that help consumers meet the
challenges of today.
They want brands to offer free or lower-priced products to help people at high risk and
those whose jobs have been affected
Spreading the message – through branding
Promoting social distances
Showing care and empathy
Incentives for brands to show what they are doing 8
1. Repurposing Production / New Products
What to consider:
Is the business looking to monetize the opportunity?
Is this a temporary switch of activities or is it something the business sees as being a
more permanent addition to its business?
Will the business look to protect the trademarks, and would they take enforcement
action to prevent others using conflicting trade marks?
Can existing trade marks for the Brands core goods/services protect use on face masks
and sanitizers?
Are you are going to licence use of your trade mark?
10
2. Thorough review of IP portfolios
3. Failure to use a trade mark
temporarily
non-use cancellation vulnerably
5 year use for incontestability
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Trade marks incorporating the terms
12
Coronavirus / COVID Applications
COVID-19
CORONAVIRUS and
Quarantine
Terms to be used in connection with goods or services that relate
to or are inspired by pandemic
Terms that are opportunistic or misguided attempts to reserve
rights in a term
The owner of the well-known Corona Beer trade mark owns
numerous trademark applications and registrations for CORONA
marks
Make sure that your trade mark serves an identifying, not a
descriptive, function
13
If you wish to obtain protection for any Covid/ Coronavirus trade
marks it is important to bear in mind the following guidelines:
Do
Do
n't
14
Registrable
COVID-VENTURES for venture capital fund
management services, filed by a digital health and
telemedicine company
COVID CARE for Software as a Service (SaaS) for
supporting individuals, teams, and organizations
responding to crisis and emergency events
CORONAVIRUS TAX AMNESTY PROGRAM for tax
planning advice and consulting services.
The Quarantine Concierge for grocery deliveries and
the delivery of meals, flowers, magazines and parcels
CORONA COUTURE, for various protective gear and
apparel
Do
Do
n't
15
Unregistrable
COVID-19 VAX for vaccines generic
FXCK COVID-19 and FXCK CORONAVIRUS for
clothing descriptive
I SURVIVED THE CORONAVIRUS, I SURVIVED
COVID-19, I BEAT THE CORONAVIRUS covering
apparel, bumper stickers, buttons, etc. are all likely to
be refused for failure to function as trademarks.
Terms that convey a sentiment, or general
information, about COVID-19 usually on the front of
a t-shirt as opposed to identifying and
distinguishing the applicant’s goods from those of
others, can’t be registered
16
Unregistrable (cont.):
conveying a message, but no
trade mark function
for clothing - Offensive / against
public morality / in bad taste, etc.
CORONAVIRUS: MADE IN CHINA
for clothing a good example of
how a proposed trademark can
simultaneously be descriptive,
probably racist, and fail to
function as a source identifier
China is being proactive about pandemic related applications. The
CNIPA recently released examination guidelines to address malicious
filings of:
marks containing the names of people involved in the epidemic
marks related to the epidemic virus and disease
marks related to epidemic-related drugs
marks for protective and preventive products
other marks related to the epidemic.
17
火神山 = 雷神山 =
“Green Channel” for Trademark Registrations Related to Epidemic Prevention and Treatment
Some IP offices may have fast track procedures for applications for
goods and services related to Coronavirus (Covid-19) epidemic
prevention and treatment
Again China is one of them, since 18 February 2020, applicants have
been able to request fast-tracked examination. One application covering
hand sanitizer, disinfectants and fungicides was examined just three
weeks from its application date
18
Suspension of Operations at IP Offices and Deadlines
Keep track of the operations of IP Offices
Deadlines relating to pending applications (e.g. responses to Office
Actions)
Registrations (e.g. maintenance or renewal)
Administrative or legal proceedings
have been extended or postponed in some jurisdictions
19
Do’s
Continue to instruct according to the original deadlines so that responses can be filed when it becomes possible
Consider all options and take the most effective one to maintain a pending trademark application or a registration
Determine the possibility of requesting an extension or to benefit from a statutory grace period
Respond partially, or file stop gap submissions, to any notice in order to maintain the application or registration
Check which trademark proceedings can be suspended and what needs to be done to apply for a suspension
Check whether trademark renewals be delayed due to the coronavirus outbreak
Don'ts
Ignore a deadline or rely on extended deadlines unless absolutely necessary
20
Key issues
False/misleading advertising
False/misleading/unsubstantiated medical/health claims
Distribution of medical-related supplies as gifts
Product labelling and export/import regulations (these will not be
discussed at this webinar)
22
No false or misleading description - information provided should be consistent with the actual effects, function, purpose, quality, ingredients, etc. of the product
Scientific results, statistics, research findings, etc., used should be accurate, verifiable and referenced
In some jurisdictions, no superior or absolute descriptors, e.g., “the best”, “the highest grade”
In some jurisdictions, no direct comparative advertising
23
General Rules – True and Non-misleading
Potential Risks
Administrative penalties (in some jurisdictions)
Civil liabilities (in most jurisdictions)
Criminal liabilities (in most jurisdictions)
Negative publicity and reputational damage
24
26
Masks and PPE – Marketing example in China
Medical or
surgical masks
PPE
(e.g. gowns)
Non-medical
masks
“Medical Devices”
• Prior vetting is required for their
advertisements
• Celebrity endorsement is not allowed
• Note: registration or record-filing with
local Medical Products Administration
(MPA) required for manufacturing or
selling medical devices
No prior vetting of advertisements required
However, must not:
• Claim disease treatment functions (not
advisable to mention disease names, e.g.
“COVID-19” or “SARS”)
• Use medical wordings or wordings that
are likely to cause confusion with medical
or surgical masks (e.g. “blocks bacteria
and viruses”)
NOT “Medical Devices”
Goods:
Regular disposable masks
Advertising Claims:
• “Fully enclosed fit protection;
pollen, droplets, bacteria,
viruses”
• “Effectively blocks bacteria
and droplets”
• “Effective barrier ≥95%”
Problem:
Use of wordings that are likely
to cause confusion with
medical devices
Outcome
Local AMR at Shantou has
opened a case for investigation
Case #4 in Guangzhou AMR’s “Cases of Illegal Advertisements During COVID-19” 27
Avoid medical terminology such as “bacteria” or “virus” on non-medical masks
Goods:
Medical isolation masks
Advertising Claims on
TMALL:
• “Hai Shi Hai Nuo-brand
surgical mask for medical use”
• “Bacteria-free disposable
non-woven mask”
Problem:
Description inconsistent with
the actual product sold
Outcome:
Due to the large amount of money
involved (200,000 masks were sold via
TMALL), the case has been
transferred to the public security
organs for handling
Case #5 in the SAMR’s “First Batch of Typical Cases of False and Illegal Advertisements in 2020” 28
Ensure description is accurate
Provide details of study / experiment
Goods:
Hand sanitizers
Advertising Claims on
WeChat:
“Contains 50% alcohol;
effective disinfection rate
reaches 99.999%”
Problem:
Did not specify the product’s action
time, conditions of the experiment, and
types of bacteria and viruses studied
Outcome:
Local AMR at Guangzhou has opened
a case for investigation
Case #5 in Guangzhou AMR’s “Cases of Illegal Advertisements During COVID-19” 29
Avoid unsupported and unproven claims
Goods:
Food, healthcare food, oral sprays
Advertising Claims:
• “Activate own immune cells”
• “New discovery against novel
coronavirus”
• “Can prevent coronavirus
from attacking respiratory
epithelial cells”
Problem:
• Advertiser unable to provide
evidence that the products can
prevent coronavirus infection
• The advertisement contains false
and misleading information
Outcome:
Local AMR in Tianjin imposed
administrative penalty of
RMB 200,000
Case #1 in the SAMR’s “First Batch of Typical Cases of False and Illegal Advertisements in 2020” 30
On February 13, 2020, the Customs
arrested two men on suspicion of
contravention of the TDO
Normal saline labelled as “0.9% sodium
chloride" and "solution for irrigation”
The pharmacy added a sign to the carton,
claiming that the normal saline could be
used for hand washing and floor cleaning
Such description is not in line with the
product description on the bottle
Customs Enforcement in HK: False or Unsupported Claims
31
False composition description and containing toxic methanol
Case 1:
“75% ethanol” sold in plastic bottles labelled as 1 L
Lab results: <0.1% ethanol; 52% methanol; actual vol. 737 mL
Case 2:
“75% ethanol” sold in plastic bottles labelled as 500 mL
Label stated “complying with the relevant national standard”
Lab results: 69% ethanol; 8.2% methanol (not compliant with
national standards); actual vol. 478 mL
Case 3:
“75% ethanol” sold in plastic bottles labelled as 5 L
Label stated “complying with the relevant national standard”
Lab results: 73% ethanol; 1.6% methanol; actual vol. 4.482 L
Customs Enforcement in HK:False Composition Description on Unsafe Disinfectants
32
Distribution of masks as gifts
For disposable masks, conspicuous and bilingual “Not Reusable” warnings
in bold are advisable
Some businesses have been giving out masks as gifts or promotional items.
These masks may be sourced from elsewhere, but not manufactured by the
businesses themselves. Some points to note:
Advisable to clearly state the actual manufacturer and the word “GIFT”
Any trade description should still be true and non-misleading
Advisable to obtain from the manufacturer:
Certificate confirming the advertising claims
Certificate issued by an approved laboratory showing that samples of the
product conform to the advertising claims and relevant safety standards
33
Many expect the trend of globalization might
end after the winding up of the COVID-19
pandemic. What would be the IP strategies to
deal with the situation should this unfortunate
scenario come true?
What is your view on how to best manage the
brand in the event that the brand is associated
with the negative effect of this pandemic i.e.
source of pandemic spread, country reputation?
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