Two Montreal lawyers file application to trademark the term COVID-19

Two Montreal lawyers have applied to trademark COVID-19, a filing that some experts said it is unlikely to succeed.

Meriem Amir and Giovanni De Sua filed applications on March 25 to trademark the name of the disease caused by the new coronavirus as well as the term “COVID-19 prevention and care,” according to the trademark database of the Canadian Intellectual Property Office.

Amir and De Sua, who are not listed on the federal government’s registered trademark lawyer database, said in their application that the use of the term would be related to vaccines.

The pair did not respond to multiple requests for comment, but intellectual property lawyers said they didn’t understand why someone would try to trademark COVID-19.

“These trademarks will likely never be registered in Canada,” said David Lipkus, a trademark lawyer in Toronto with the firm Kestenberg Siegal Lipkus.

He said it usually takes about two years for a trademark decision to be made, although that could be longer due to the pandemic.

A mark must pass several tests in the trademark application review, he said, including whether the term is descriptive and distinctive. If they are not, the application would be rejected.

Trying to trademark COVID-19 would be akin to making the word cancer or diabetes a trademark, Lipkus said.

“So that may lead someone to believe that this is more of an opportunistic filing than a business that is legitimately intending to create a vaccine,” he said. 

“Hopefully there will be multiple traders and multiple businesses that are able to use that COVID-19 term on vaccines and allow all businesses in Canada to use it and not allow one trader to monopolize it in our country.”

Alan Macek, a Toronto trademark lawyer, said he’s not surprised someone is trying to trademark COVID-19.

“There’s often a flurry of trademarks being filed when there’s something new in the news and people are talking about,” he said.

“Hopefully at some point soon people will be coming up with vaccines and treatments and will want to have brands and trade names associated with those once those are being commercialized. Perhaps some people are trying to think they can get ahead of that.”

Macek said accepted trademarks are usually a coined term or a combination of words that could include COVID, but something to make sure it is “distinct.”

A few others have filed applications with COVID-19 related terms. On April 7, MedMira, a Nova Scotia medical testing company, filed to trademark “REVEALCOVID-19.”

On Thursday, the company announced it had developed REVEALCOVID-19, a rapid serological test that purports to detect antibodies to the novel coronavirus. Experts have said serological tests can be used to detect who had the virus, but is not reliable at detecting the virus in the first few days of infection. The company said it awaits regulatory approvals for the test.

Lipkus said MedMira’s application appeared to be legitimate, but also may need to be more distinctive in order to get the trademark.

The U.S. Patent and Trademark office has also seen a surge of COVID-19 trademark applications, many of which appear to be “opportunistic,” Lipkus said.

But Lipkus is heartened by the companies who are opening up their intellectual properties to help fight COVID-19.

Medtronic, which makes ventilators that are in high demand throughout the world, offered up its intellectual property to anyone who could help manufacture more ventilators.

“There are many businesses in Canada and around the world that are coming together for the benefit of society and putting money aside and just focusing on getting this world back to where it needs to be,” Lipkus said.

“They are sharing intellectual property to help other companies fight COVID.” 

This report by The Canadian Press was first published on April 18, 2020.

Liam Casey, The Canadian Press