In my previous publications on IP Blog I have already discussed the problems encountered by applicants in connection with registration of trademarks having some reference to hemp and cannabis (The symbol of cannabis is contrary to public policy and a trademark containing it cannot be registered in the European Union.A trademark cannot contain the symbol of cannabis. But is it always so sure?). This time I would like to present the case of three EUTMs and the most recent decisions of the EUIPO Board of Appeal concerning these marks, dating from the first quarter of 2021.
The first case concerns the trademark of the European Union WELL WEED no. EUTM 018282503:
The above trademark was applied by three physical persons from Sardinia, an Italian island in the Mediterranean. The application covers only two classes: 22 (cannabis) and 34 (tobacco and tobacco products (including tobacco substitutes).
The mark met with refusal of granting protection by EUIPO due to being contrary to public policy and accepted principles of morality, which exist in only part of the European Union (art. 7 par. 1 letter f) and art. 7 par. 2 of the Regulation (EU) 2017/1001 on the European Union Trademark).
By the decision of the 5th Board of Appeal of 4 March 2021 (case R 213 / 2021-5), it was found, that “By choosing a trade mark with the word ‘WEED’, the invalidity applicants, even if involuntary, draw attention to the concept of cannabis as a narcotic substance, regardless of whether or not illegal prudentials are present in the goods designated by the trade mark.”(author’s translation)
According to the Board of Appeal, “the sign ‘WELL WEED’ taken as a whole, insofar as it will be perceived by recipients, is incited, implicitly but necessarily, to the use of such illicit substances, or at least markets their consumption” (pt. 39 of the decision). In the decision reference was also made to the earlier resolution in the case of the trademark CANNABIS STORE AMSTERDAM (which I discussed in one of my previous entries on IP Blog: https://ip-blog.pl/2020/09/symbol-marihuany-jest-sprzeczny-z-porzadkiem-publicznym-i-znak-towarowy-go-zawierajacy-nie-moze-zostac-zarejestrowany-w-unii-europejskiej/ ).
The Board of Appeal had also not been convinced by the trademark owners arguing that “there are currently a number of ongoing reflections on both the use of cannabis products with a tetrahydrocannabinol (THC) content that does not render them narcotics or their use when they are drugs, for therapeutic or even recreational purposes. In that regard, the legislation of some Member States has itself already evolved or is in the process of evolving” (pt. 26 of the above decision).
The argumentation of the Board of Appeal was much more understandable in two subsequent cases, which I would like to mention.
Namely, the Fifth Board of Appeal upheld the decisions on refusal of registration in respect of the following trademark applications:
|Case no. R 2888/2019-1||
Case no. R 2890/2019-1
on the basis of the same grounds – that is, being contrary to public policy and accepted principles of morality.
In the case of the above mentioned trademarks, applied by a physical person also from Italy, in some way it is easier to understand the aforesaid grounds of refusal. Already at first glance, one can see bloodshot eyes, yellowish teeth, a cigarette joint kept in the mouth and a cloud of heavy smoke rising in the air, while the image of the skull itself may indicate a hazardous impact of the products designated by the mark on the smoker’s health.
What is interesting, the above marks were destined not only for cannabis (class 22), tobacco products (class 34), but also for educational services (class 41).
In the grounds of appeal, the applicant of the above marks argued among others that “the designs marketed under the trademarks mix the military designs with a chance proposal. Therefore, the logo includes a fishine (abstenerse symbol) with a military helmet, adding the detail of the hemp leaf in order to associate them with the vegetable and natural raw material used to make them” (pt. 6 of the Fifth Board of Appeal’s decision of 9 February 2021 in the case no. R 2888/2019-1). Undoubtedly, such argumentation is interesting, however finding it to be justified may be difficult indeed.
The Board of Appeal also discussed the origin of the word element “terps” present in both marks, considering it to be the abbreviated name of one of the varieties of cannabis (which refers to terpenes – the oils originating from the plant variety named Sour Diesel, responsible for contributing to its flavor). Well-oriented consumers may indeed be able to make such associations, as the term “hemp terpenes” is found to have been functioning in market transactions.
The Board of Appeal also made reference to the issue of Brexit (and consequently the assessment of the marks and the way of perceiving them by consumers in the context of their knowledge of English). Other marks with the design of the leaf of cannabis were also quoted, as examples of the marks which obtained registration. The Board of Appeal referred to these examples and explained why in those particular cases registration could have been permitted.
In both cases the argumentation was very extensive, however the EUIPO finally concluded that the overall impression evoked by the above mentioned applications constitutes the message which incites to the consumption of the substances which are prohibited in some parts of the European Union, or are noxious substances, and for these reasons they shall not be registered as EUTMs.
Nina Jankowska is a patent attorney in Trademark and Industrial Design Department at Patpol.. She graduated from the Warsaw School of Economics, currently studying law at the Kozminski University. Contact with the author