CJEU: cannabis trade mark is contrary to public policy

Beverley Potts

An application for the above trade mark covering food and beverage items has been rejected by the EU General Court. The court confirmed the EUIPO’s previous decision that the mark is contrary to public policy for the following reasons:

  1. The sign contains a stylised depiction of the cannabis plant, which is the media symbol for marijuana;
  2. The word AMSTERDAM refers to the city’s tolerance policy regarding the sale of narcotics derived from cannabis (in certain circumstances);
  3. The word STORE would lead consumers to expect that the goods sold under the sign would correspond to those available in a shop selling narcotic substances.

The court acknowledged that hemp is not an illegal narcotic substance if its THC level is below a certain threshold. However, the combination of the 3 elements in the sign draws the attention of consumers, who don’t necessarily have technical knowledge regarding cannabis as a narcotic substance that is illegal in many EU countries. The Court emphasised that, even though the legalisation of cannabis for therapeutic and recreational purposes is under discussion across the EU, the consumption and use of cannabis containing THC above a stated threshold remains illegal in most EU states. There is therefore a public health objective in tackling the narcotic substance derived from cannabis and combating the harmful effects of that substance. Accordingly, rules on the use of that substance are a matter of public policy. The relevant public would perceive the sign as an indication that the food and drink products sold under it contain narcotic substances that are illegal in many EU member states and that is sufficient to conclude that the mark is contrary to public policy.

This is an example of a growing trend with companies trying to register cannabis related trade marks. These trade marks can face problems if they are considered to be descriptive of the goods that they cover or, as here, they are considered to be contrary to public policy or accepted principles of morality.

This case confirms the general principle that signs will not be registrable if they might be perceived as encouraging the purchase of illegal goods or trivialising their consumption. A trade mark application for ‘La Mafia se sienta a la mesa’ was previously rejected for similar reasonsbecause it conveyed a positive image and trivialised the serious harm inflicted by a criminal organisation. Such a mark is likely to shock or offend any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds. It is therefore likely that future marks that give the impression of promoting illegal activity, glamorising illegal or recreational drug taking or allude to the psychotropic effects of THC, might also fall foul of this ground.

On the other hand, the use of cannabis-derived products for medicinal purposes is increasing across the EU and there are a number of products that have now obtained regulatory approval. Trade mark applications for those products (e.g. SATIVEX and EPIDYOLEX) have succeeded to registration because there is nothing inherently abhorrent in the trade mark itself, it should not offend the EU public and it doesn’t fall foul of other invalidity grounds by being e.g. descriptive or deceptive.

We are also seeing an increase in the number of CBD-related products available on the high street (creams, oils, supplements, cosmetics, foods and beverages). We therefore expect to see the trade mark registries and courts having to grapple with whether marks covering these types of products are descriptive, deceptive as to the nature of the goods covered or their proven effects or contrary to public policy or morality, bearing in mind the shifting regulatory position and developing consumer attitudes towards cannabis. In this regard, the USPTO has recently issued guidance that it will follow the normal examination procedures for trade mark applications for CBD products filed after December 2018 (when hemp-derived CBD with less than 0.3% THC was legalised). These guidelines remove the USPTO’s longstanding bar on cannabis-related trade marks and instead state that registration of marks covering hemp-derived goods and services, including CBD, will be allowed provided the products specify that their THC content is under 0.3%.

 

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