Cannabis and Trademarks

Submitted by leslynowak on Tue, 07/02/2019 - 11:46
 
Cannabis and Trademarks, what is the deal?

A month or so ago, we received an interesting question. The person approaching us had been wondering: How is it possible that the EUIPO has granted registration to trademarks related to cannabis-derived products, although cannabis has not been legalised in the EU?

So I started to investigate and discovered that this plant can actually entail a whole array of legal implications: intellectual property rights, plant varieties, issues regarding the concept of “private use” and private smoking clubs... This is a broad field of investigation and it is only going to widen over the course of the next years as regulations develop. Although I found it fascinating to see how the legislation is shifting and adapting, this article will remain focussed on trademark-related issues.

Unlike Canada and some US States, recreational use of cannabis remains illegal in all European countries, even if penalties for use related offences vary widely from one member state (“MS”) to another[1]. In the Netherlands, cultivation, supply and personal possession of cannabis are all criminal offences, but a practice of tolerance has evolved in the concept of "coffee shops", that is, cannabis sales outlets licensed by the municipality. However, most municipalities do not allow these coffee shops. In other countries, like Spain and Belgium, where private cannabis growth and consumption is allowed, this has evolved into the creation of private cannabis club.

After the legalisation of medical cannabis in Germany, other European countries have followed the example, such as Portugal and Denmark… Some, including the Netherlands, Italy, Czech Republic and Croatia have agencies governing the production and supply of medical cannabis and regulations regarding cultivation, production, possession and use. Others, have simply made available cannabis-based medicine in their country. For example, Sativex®, a treatment for multiple sclerosis, which contains extracts of cannabis has been authorised in 17 EU member states (Spain being one of them). In the UK, the government went a step further and reclassified cannabis derived medicines at the end of 2018 to allow UK doctors to prescribe them.

To this landscape of varied national rules, you need to add the European Novel Food Directive[2] according to which products made for human consumption containing CBD must be checked, analysed and registered. So now that you have had a glimpse of the complex (and fascinating!) legal landscape, let’s move onto trademarks.  

In Europe, there is actually no absolute prohibition forbidding trademark registrations for cannabis and cannabis-related products, as the one in place in the US. However, access to trademark registration for cannabis products is not as easy as it would be in Canada, for example, which recently legalised cannabis.

Therefore, there are currently a significant number of cannabis trademark applications under examination/published at the EUIPO. As of June 2019, 15 cannabis-related Trademarks were registered (for example, Miss Cannabis or cannabistro) and 2 applications are pending.

Although registration has been granted for some trademarks, the EUIPO has objected to trademark registration on the basis that it is "contrary to public policy or to accepted principles of morality" (Article 7(1)(f) EUTMR).

What is "public policy"? Well, this intends to deny registration of those marks that could lead to  public disorder or could be seen as promoting any criminal or other offensive behaviour (for example, “Bin Ladin” was refused registration as a trademark because of its obvious terrorist connotations). Therefore, this would include marks associated with illegal drugs. “Public policy” is a subjective concept that may vary from country to country and over time. What might have been perceived as “immoral” decades or centuries ago, is now widely accepted, and what is considered as “immoral” in one country, can be totally acceptable in another. This is what could potentially  happen with cannabis in Europe.

In this particular case, if the EUIPO objects on the basis of “public policy”, this would not really refer to the wording of the mark itself but rather to the legality of the goods or services covered by this trademark. Marks including the words cannabis, marijuana, weed, hash or other cannabis-related or derived words or symbols will be specifically scrutinised.

The EUIPO recently accepted applications for the marks "SPEKTRUM CANNABIS" and "SPECTRUM CANNABIS" for a wide variety of cannabis related goods including medical cannabis, skin care preparations containing cannabis plant derivatives, food and beverage products containing cannabis, hemp seeds, pipes and vaporizers for administering medical cannabis and various educational, product development and medical, consulting and advisory services relating to cannabis. According to the EUIPO’s practice, there seems to be no problem with the use of cannabis in cosmetic preparations, foodstuff or for medical purposes.

However, protection will be most likely rejected if the products covered by the trademark are intended to be used for recreational purposes. Hence, when the trademarks refers to the actual living cannabis plants and seeds, smoking accessories or marijuana, amongst others, the Office will most likely maintained its objection and refuse to grant protection. Why? Because these goods are considered to be contrary to the “accepted” principles of morality and, in this context, the mark is associated with the promotion of the consumption of a drug for recreational purposes, a drug that is considered harmful to the health of people.

Therefore, for the time being, cannabis related marks for any goods or services referring primarily to recreational use are likely to be rejected. However, where use of cannabis is not for psychoactive recreational purposes, the EUIPO has shown that it is willing to accept arguments that such use in relation to a wide variety of products is not contrary to “public policy”.

In conclusion, although business opportunities in this market may remain limited due to the current legal landscape, as EU legislation shifts so will the concept of “public policy” in relation to cannabis. Hence, we can expect an increase of trademark registration as the public conception changes.  


"cannabis-1131526_960_720" by megforce1 is licensed under CC PDM 1.0  

[1] See European Monitoring Centre for Drugs and Drug Addiction (2018), Cannabis legislation in Europe: an overview, Publications Office of the European Union, Luxembourg.

[2] Regulation 2015/2283 of the European Parliament and of the Council of 25 November 2015 on novel foods.