• Our People
  • Global Presence
  • Regions
    • Asia
    • Europe
    • Americas
  • Offices
    • Canada
      • Ottawa
      • Toronto
    • China
      • Beijing
      • Hong Kong
    • Luxembourg
    • Malaysia
    • Singapore
    • UK
      • Aberdeen
      • Birmingham
      • Cambridge
      • Edinburgh
      • Glasgow
      • London
      • Manchester
      • Oxford
  • Client liaison
    • Japan
    • Korea
  • Expertise
  • Services
    • Patents
    • Brands & Trade Marks
    • Designs
    • Litigation & Dispute Resolution
    • Commercial IP & Contracts
    • Due Diligence
    • Freedom to Operate
    • EPO Patent Oppositions
    • European Patent Validations
    • Anti-counterfeiting
    • Open Source & Third Party Code
  • Sectors
    • Digital Transformation
      • 3D Printing
      • Artificial Intelligence
      • Blockchain
      • Data & Connectivity
      • Extended Reality
      • Industry 4.0
    • Energy & Environment
    • Life Sciences
    • Agritech
    • Medical Technologies
    • Chemistry
    • Transport
    • Entertainment & Creative Industries
    • Food & Drink
    • Fashion & Retail
    • Universities & Research Bodies
    • Start-ups & Spin-outs
      • Creating value for start-ups
      • The IP driven start-up
    • Financial Services
  • About Us
    • Working with us
    • Awards
    • Corporate & Social Responsibility
    • Diversity & Inclusion
    • Careers
  • Insights
    • Articles
    • News
    • Events
    • Resources
    • Unified Patent Court hub
    • Beyond Brexit: European trade mark hub
    • M&C Reacts
  • Contact Us
Marks & Clerk logo
Marks & Clerk logo
Contact Us
Language
English
Our People
Global Presence
Regions
  • Asia
  • Europe
  • Americas
Offices
  • Canada
    • Ottawa
    • Toronto
  • China
    • Beijing
    • Hong Kong
  • Luxembourg
  • Malaysia
  • Singapore
  • UK
    • Aberdeen
    • Birmingham
    • Cambridge
    • Edinburgh
    • Glasgow
    • London
    • Manchester
    • Oxford
Client liaison
  • Japan
  • Korea
Expertise
Services
  • Patents
  • Brands & Trade Marks
  • Designs
  • Litigation & Dispute Resolution
  • Commercial IP & Contracts
  • Due Diligence
  • Freedom to Operate
  • EPO Patent Oppositions
  • European Patent Validations
  • Anti-counterfeiting
  • Open Source & Third Party Code
Sectors
  • Digital Transformation
    • 3D Printing
    • Artificial Intelligence
    • Blockchain
    • Data & Connectivity
    • Extended Reality
    • Industry 4.0
  • Energy & Environment
  • Life Sciences
  • Agritech
  • Medical Technologies
  • Chemistry
  • Transport
  • Entertainment & Creative Industries
  • Food & Drink
  • Fashion & Retail
  • Universities & Research Bodies
  • Start-ups & Spin-outs
    • Creating value for start-ups
    • The IP driven start-up
  • Financial Services
About Us
  • Working with us
  • Awards
  • Corporate & Social Responsibility
  • Diversity & Inclusion
  • Careers
Insights
  • Articles
  • News
  • Events
  • Resources
  • Unified Patent Court hub
  • Beyond Brexit: European trade mark hub
  • M&C Reacts

When is a Cannabis Trade Mark contrary to public policy?

16 December 2019
Michael Shaw
Print
Share

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.

Next Story
  • Preliminary position on priority published
  • International patent insights on quantum computing
  • Cambridge: City of Innovation - The 'beer summit' that generated a genomic revolution
  • IP protection in collaborations: "Just Do It"
  • Peppa Pig v Wolfoo: clash of the cartoons
More insights

Latest Insights

Chemistry
Article
- 24 March 2023

Preliminary position on priority published

As we reported in early 2022, the Enlarged Board of Appeal of the EPO are considering two pending referrals (G1/22 and G2/22) regarding the question of entitlement to priority. A hearing has now been set for 26 May 2023, and the Enlarged Board have now issued a preliminary opinion setting out the points to be discussed.
Read more
Quantum computing
Article
- 22 March 2023

International patent insights on quantum computing

The latest patent insight report from the European Patent Office (EPO) looks at the trends in patent filings for quantum computing, and has uncovered some interesting findings.
Read more
Article
- 22 March 2023

InterDigital v Lenovo: The latest FRAND judgment

On 16 March 2023, Mr Justice Mellor handed down the latest FRAND judgment: InterDigital v Lenovo. The case concerned a dispute between InterDigital and Lenovo as to the terms on which Lenovo should take a licence to InterDigital’s portfolio of patents which had been declared essential to the European Telecommunications Standard Institute (ETSI) Standards.
Read more
Marks & Clerk logo (white)
  • Terms & Conditions
  • Privacy Notice
  • Cookies
  • Legal Notices
  • Press Enquiries
  • Lexology
  • Mondaq