The different branches of cannabis industries are still relatively new and the formerly widely illegal trade with cannabis becomes more and more legalized at least for medicinal use especially across the Western nations and Latin America.
As with any new and growing economic potential, there is a central interest in intellectual property (IP) to protect innovations and investments made to profit on the market.
Protection of brands by trademark registration should be one of the highest priorities for any company – whether it be a start-up or a well established company.
What is a trademark?
A trademark is a sign feasible to differentiate goods or services of one business in the market from the ones of the others (competitors). What form of a sign may qualify as a trademark is largely dependent on the respective legal system. In Europe, for a so called registered (European) Union trademark (“EU-TM”), it can be basically e.g., any single or multiple word phrases, slogan, product name, symbol (also 3D), color or even sound. An EU-TM grants pan-EU rights, valid in all 27 Member States (UK was excluded since January 2021).
Nevertheless, no harmonized EU law on cannabis use exists: The criminal response to drug use offences is the responsibility of the single national member states of the EU, not of the EU itself.
What is the function and the benefit of holding a trademark?
Trademarks guarantee protection of brands from being copied or used without the permission of the trademark owner. Thus, ultimately, they function to protect the intellectual investment of company owners. Additionally, they function by permitting informed buying decisions regarding quality and safety, as e.g., branding helps distinguish one trademark labelled product from another. Trademark protection arises by e.g., legally using the trademark labelled on products in the market or after federally registering the trademark with a qualified registry. For EU-TM the responsible registry is the European Union Intellectual Property Office (“EUIPO”).
However, conflicts may arise with cannabis-related trademarks known as “cannabis or marijuana marks”. This as the two main prominent uses of cannabis, i.e., “medicinal use” and “recreational use” create a different subset of legality due to a different speed of legalization and degree of will for legal reformation in states and governments, a kind of “legal mosaicism”. E.g., on one hand at least commercial scale recreational use of cannabis is illegal in all European states (and on federal level and in some states in US) but on the other hand for private use it is decriminalized or unenforced with regards to penalties for per se illegal recreational use related offences in some European (and US) states. Additionally, for at least restricted medicinal use it is legal in most but not all European (and US) states. This “legal mosaicism” creates an uncertainty for many company owners whether their companies and brands qualify for trademark protection.
They face questions like:
What is the legal consequence when the product that we are selling is legal in one state, but illegal in another state (or in US also illegal on federal level)?
Thus, cannabis companies face unique challenges when developing their brands and protecting their trademarks.
In Europe, contrary to US federal legislation under “Trademark Manual of Examining Procedure” of the USPTO in combination with the federal “Controlled Substance Act“ (“CSA”), the latter federally banning cannabis, there is no cannabis specific legislation in force for absolute prohibition concerning trademark registration for cannabis and -related products. Nevertheless, access to trademarks in Europe is not that easy to obtain.
Can you register a trademark for something illegal or something banned from medicinal use such as cannabis?
Performing a cursory search on a global trademark database (https://www.tmdn.org/tmview/#/tmview, status: April 2021) reveals 4,413 trademark hits (termed: registered, filed, expired and ended (= refused) applications) worldwide which include the word “cannabis”. 1,119 of them are registered. Geographical Europe trademark hits of these are 869, including 666 (European) Union trademark hits. The latter including 99 registered and 15 filed European applications at the EUIPO.
Thus, national illegality has only a little impact on the branding of cannabis and cannabis-related products: The legality of the product does not necessarily affect the registrability of the sign as an EU-TM.
In Europe, national illegality does not count as a measure for ability to get an EU-TM registration but … !
A sign which applies for EU-TM registration is always assessed by the EUIPO with regards to the concrete TM class goods or services which it claims. The EUIPO does typically not debate about potential national criminal matters in trademark applications, such as the legality of cannabis products and cannabis symbols (e.g., figurative cannabis leaf) since as stated above there is no harmonized EU law on cannabis use.
As a result the EUIPO sets the same general criteria for registration of all trademarks towards trademarks concerning cannabis or cannabis derived products. Meaning a cannabis-related TM application can with regards to the respective goods or services claimed be refused simply as e.g., being descriptive (T 234/06, Cannabis), lacking distinctive character (R 1610/2018-2, Know your cannabis) or not being perceivable as a trademark (R 2333/2017-1, CHEESE).
The EUIPO has been known to register EU-TM applications which cover cannabis products without explicit restriction to those goods with higher psychoactive content. However, among the different European state legislations Tetrahydrocannabinol (“THC”) content limit is often the criterium to define illegality (e.g., in Germany it is set to 0.2%).
In this direction, the EUIPO registered EU marks as “SPEKTRUM CANNABIS” and “SPECTRUM CANNABIS” for quite a wide range of cannabis-related goods of class 5 of the Nice Classification („International Classification of Goods and Services for the Purposes of the Registration of Marks“, NCL). This includes food and beverages containing cannabis; medical cannabis; cosmetical skin care preparations containing cannabis-related derivatives; hemp seeds; pipes and vaporizers for administering medical cannabis and services relating to medical cannabis in Nice classes 35, 40, 41, 44 and 45.
Source: EUIPO database (EU-TM 17878735)
Despite registration was granted for some trademarks, the EUIPO has also refused several trademarks under Art. 7(1)(f) EUTMR to be “contrary to public policy or to accepted principles of morality” or in other words to be quite highly suggestive of an illegal activity. Assessments are e.g., performed on the relevant consumer and their country of origin and based on the language of application. Thus, the EUIPO may take the potential criminality of cannabis goods for a consumer into account when assessing a mark.
Quite recently the EU-TM application “Cannabis Store Amsterdam” was refused by the European General Court (“EGC”) for that reason as a violation against the public policy (T-683/18).
Source: EUIPO database (EU-TM 16 176 968)
Thus, in practice Applicants must be prepared for “more critical” levels of assessment for cannabis-related EU-TM applications. Therefore, and despite the actual equal general assessment, the EUIPO judgement can be inconsistent with regards to cannabis-related products making the registrability of cannabis-related products a bit unpredictable.
To sum up, the registration as EU-TM of signs comprising the words “cannabis”, “marijuana”, “pot”, “weed” or even also “hemp”, “grass” or other cannabis-related words and/or symbols (e.g., the figurative cannabis leaf) still remains somehow critical if it is viewed by the EUIPO to be suggestive of an illegal activity.
It seems that the EUIPO has no issues with the registrability of EU-TM applications for cannabis or cannabis-related products, which are directed to medical or cosmetic purposes. However, it will most likely refuse TM applications which (primarily) are intended to be used for recreational intoxication purposes.
There is a variety of protection potentially available through trademarks for “cannabis” and “cannabis-related” goods and services in the leading Western markets. Nevertheless, there may be some unique registrability issues and pitfalls to be kept in mind to protect your business. Thus, allow us to assist you with our professional experience before rushing to file a trademark application for your cannabis development / brand.