Stefan Martin, Member of the Second Board of Appeal
Trademarks and Marihuana: Registration of trade marks containing the word “cannabis” or any equivalent
Despite the greater tolerance towards the consumption of marihuana, EUIPO’s Boards of appeal remain rather conservative when it comes to the assessment of the validity of the so called “cannabis marks”. On the basis of article 7(1)(f) EUTMR which provides that trademarks which are contrary to public policy or to accepted principles of morality shall not be registered, the Boards have routinely confirmed the rejection of these trademarks. (KRITIKAL BILBO” which identifies a variety of marihuana (27/10/2016, R 1881/2015 1, KB KRITIKAL BILBO).
A trade mark containing the word “cannabis” or its equivalent may also be barred from registration in relation to products that may contain cannabis such as “oils, herbal teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages” since it is descriptive of the characteristics of the goods in question, in particular of cannabis, which is one of the ingredients which may be used as a flavoring in the manufacture thereof (19/11/2009, T 234/06, Cannabis, EU:T:2009:448, § 32) The same conclusion applies in relation to a mark that takes the name of a hybrid of a cannabis plant (25/10/2018, R 2333/2017-1, CHEESE). The relevant consumer understands the term 'Cheese' as the name of a certain type of cannabis seeds and does not perceive it as trade mark. Finally, the “cannabis” mark may also be rejected for lack of distinctive character when it is used as part of slogan such as “KNOW YOUR CANNABIS” (29/11/2018, R 1610/2018-2, Know your cannabis).
The registration as EU trade marks of signs comprising the words “Marijuana”, “cannabis”, “hemp”, “grass”, “pot”, “weed”, “hash” remains problematic. However, this has a little impact on the branding of cannabis related product since the legality of the product does not affect the registrability of the sign.