Knowledge & News

When is a Cannabis Trade Mark contrary to public policy?

16 December 2019

In a recent decision of the General Court of the European Union (Santa Conte v. EUIPO, Case T-683/18), the Court was asked to consider in what circumstances a trade mark containing the word CANNABIS and a representation of a cannabis leaf would be deemed registrable within the European Union.
 
The case related to a European Union Trade Mark Application, No. 16176968, for a composite mark consisting of the word CANNABIS presented upon a background of green cannabis leaves.  The text STORE AMSTERDAM was printed in smaller type below the word CANNABIS. 

The mark was applied for in relation to a range of food and drink products, including baked goods, confectionary and soft drinks, in addition to services for providing food and drink.  The application did not expressly extend to cannabis or other products specifically containing cannabidiol.
 
The EUIPO refused the application on the grounds that the mark was considered to be contrary to public policy.  Ms Conte appealed against this decision, only to find that the General Court has upheld the original view of the EU Trade Marks Office.
 
In reaching its decision, the General Court found that the combination of features within the mark served to draw the attention of consumers to cannabis as a narcotic substance, which is illegal in many member states of the European Union.  Whilst a trade mark application to register a trade mark consisting of each element alone may not have been considered problematic, in this case it was the combination of features that, when viewed together, were considered to be contrary to public policy since they suggested to the average consumer that the mark related to cannabis as a narcotic substance, rather than to any other lawful application of cannabis.  In particular, inclusion of a reference to a store in Amsterdam within the mark was considered to be decisive, given that the city of Amsterdam is known for stores at which the narcotic derived from cannabis may be purchased.
 
Since cannabis as a narcotic substance is illegal in many EU member states, a trade mark which purports to promote such substances was considered by the General Court to be contrary to public policy, despite the fact that the application did not extend to such goods, but rather only covered goods and services that could be lawfully provided.  As a result, Ms Conte’s application has been refused.
 
This case is highly relevant to those currently engaged in the promotion and sale of lawful cannabis products such as those containing cannabidiol or cbd.  Whilst the sale of such products is lawful in many countries around the world, this decision shows that care must be taken when adopting a trade mark for use in relation to such goods.  In particular, trade mark owners must consider carefully what impression is conveyed by the trade mark adopted – if the average consumer would perceive the trade mark as relating to cannabis as a narcotic substance, the trade mark may be considered contrary to public policy.
 
Consequently, when considering the adoption of a new trade mark relating to cbd products or, indeed, a mark containing either the word cannabis or representations of a cannabis leaf, we would recommend legal advice be taken beforehand to ensure that the mark would in fact be deemed acceptable and registrable.

Authors

Michael Shaw

Michael Shaw Partner Manchester (UK) Chartered (UK) and European Trade Mark Attorney

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