Managing trademarks in COVID-19 times

By: Marsha S. Cadogan (PhD, Intellectual Property), Barrister & Solicitor| MSC Intellectual Property & Technology Law

What role does trademark play in differentiating products in consumer markets? If your product has acquired a good reputation in consumer markets, how can you mitigate against mis-use of the brand? Commerce continues to be an essential part of our lives in COVID-19 times, and by extension, so does trademark management.

Take 3M’s recent trademark infringement lawsuit as a case in point. 3M, the manufacturers of N-95 respiratory mask, is suing a distributor of its mask for falsely misrepresenting its brand in consumer markets. Trademark management matters, even in COVID-19 times.

The Challenge

The company (New-York based) launched an action against a wholesale distributor of its mask (Performance Supply LLC) for deceptive trade practices and price gouging. What is the link to trademark protection? 3M claims that by re-selling the N-95 masks for 500% more than its market price, the distribution company is falsely mis-representing its brand reputation in consumer markets. Filed with the New York Federal District Court, 3M is also seeking relief for trademark dilution, false advertising and false designation of origin.

Why Brand Protection Matters

Your brand reputation is based on the immediate perception evoked in the minds of consumers when they see, hear of your brand, or, interact with your brand (such as with smell and sound trademarks). 3M may be motivated by an interest to safeguard the high values the public associate with its brand, especially in pandemic times.

How can you safeguard your brand in COVID-19 times?

• Control how your trademark is used in global and domestic markets.

• If licensees and sub-licensees are using your trademark, ensure that protocols are in place to monitor how the mark is used in commerce (or otherwise). Compliance should be adhered to, and not just noted on paper or in licensing agreements.

• Monitor your trademark. This may be especially relevant if your product has a global reach and there are past incidences of infringements. Also, keep renewal and maintenance dates in mind.

• This may seem obvious, but is sometimes overlooked: Is your trademark registered? Another business or entity may be using an identical or similar name, symbol or mark to refer to their goods, and you may have no recourse. This may happen if the mark was already being used in a commercial context prior to your own mark. Although there are remedies for unregistered marks, these are usually limited and of significance only

(i) if the unregistered mark has acquired goodwill

(ii) the consumer is deceived by misrepresentation from a competitor or other entity

(iii) if potential or actual loss is suffered by the unregistered trademark owner

Furthermore, unregistered trademarks are only enforceable in the geographic area where goodwill or reputation can be proven.

• COVID-19 is changing how many persons do business. If you have started selling your products online, or to customers who are predominately located in another country, you may be concerned about infringements. Trademarks provide owners with territorial privileges in the country where the mark is registered (unless the mark is a well-known mark, and even so, protection is not guaranteed). Is your trademark registered in its main consumer markets? For example, a domestic registration in Canada will not protect you against infringements in Mexico, Europe, or any other country. Trademark protection would need to be sought in these countries.

• Update your Business Strategy. A trademark strategy should be well integrated with your overall intellectual property and business strategies. Ensure that these are updated to reflect the current realities.

Keep well and Stay safe.

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This information is for general information purposes only and is not meant to be legal advise.

For trademark protection inquiries, contact Marsha at [email protected]