Cannabis TMs: when ‘weed’ won’t do
Cannabis. Hemp. Marijuana. Weed. However you refer to it, or whatever your views on its recreational use, the cannabis sativa plant is potent in more ways than one.
Quite simply, cannabis is big business: aided by partial or full legalisation regarding its use in certain countries around the world, it is fast becoming a legitimate part of the world economy.
Products derived from the plant are potentially highly sustainable, and application of use is broad. The industrial use of cannabis (or industrial hemp) covers products such as packaging, clothing, building materials and food and beverages, among others.
And medical and therapeutic cannabis overlaps to some extent with the cosmetics industry, with CBD (cannabidiol) oil a huge element within these fields.
To emphasise the promise of cannabis-related products, figures published this month estimate the global medical marijuana market is forecast to reach $250 billion in value by 2030, representing almost 32% compound annual growth rate (CAGR) since 2020. And the global industrial hemp market is predicted to be valued at approximately $16 billion by 2030, with a CAGR of 17% from 2021.
European boom
Within this global context, in Europe the cannabis market is forecast to reach a value of €3.2 billion ($3 million) by 2025, growing at a CAGR of 67.4% from 2021, according to a report from Prohibition Partners.
By the end of 2025, several nations are expected to introduce legal access to adult-use cannabis including the Netherlands, Switzerland, Germany and others. These sales, say the report’s authors, could be worth more than €500 million ($499 million) by 2025.
Germany is seen as a powerhouse of cannabis-related product sales, with the country representing approximately half of the European cannabis market as of 2021. The country is also set to introduce fully legalised cannabis access for adult use, by which time, its domestic market value is predicted to have more than doubled to €840 million ($839 million).
Large countries like France and the UK are predicted to develop their patient access “considerably” and will represent a “significant share” of the European market.
Navigating the IP scene
But with such vastly differing legislation surrounding the use of cannabis among European states, not least when it comes to IP protection, how can brands navigate this when seeking to obtain their related trademarks?
Gordon Humphreys is chairperson of the First and Third EU Intellectual Property Office (EUIPO) Boards of Appeal and reviews refused trademark applications on appeal at the office. He points out that there are some legislative commonalities across the EU regarding cannabis.
“I don't pretend to be an expert in 27 legislations,” he says. “But in terms of the hemp that's used for industrial and cosmetic purposes, the EU has a greening payment to young farmers for cultivation [the Commission Delegated Regulation (EU) 2017/1155 of 2017].”
Crucially, he adds that in order for cannabis to be grown legally in the EU, the levels of THC (tetrahydrocannabinol—the narcotic element of the plant) must not exceed 0.2%.
“In the EU, 0.2% of THC is the general cut-off point for when it is considered non-narcotic hemp, and beyond that, it becomes marijuana or cannabis,” explains Humphreys.
Having said that, there is some variation in acceptable levels of THC across EU nations.
For example, Czech MEPs adopted an amendment in 2021 to the law on addictive substances, accepting 1% THC in hemp products.
“Conversely, the legal limits can occasionally be above 0.2%,” he adds. “For example, it appears that in Luxembourg the sale of CBD, with a THC limit of 0.3%, is contemplated.”
‘War on drugs’
The reason there are acceptable and unacceptable levels of THC, explains Humphreys, is the “war on drugs”, which is UN policy as well as an EU public policy matter under articles 168, subparagraph one, and article 83 of the TFEU—the founding treaty of the European Union.
“So obviously in terms of companies that are manufacturing these products and putting them on the market in the EU, it's a complicated situation. Of course, at the EUIPO, a trademark may be considered registrable, but the precise THC content of the product actually produced and marketed, will often not be known by the examiners.
“Whether then you can use it in each and every member state is another issue. It is the job of the EUIPO to ensure that the trademark for which protection is sought doesn't offend public policy, that it doesn't trivialise or encourage illegal or narcotic-type cannabis in any way.”
All in a name
When it comes to the registration of trademarks for legitimate cannabis products in the EU, there are some names that are just not going to cut it at the EUIPO.
Some of the many marks that didn’t make it onto the register are “Cannabis Beauty”, “Cannabis Chill Out”, “Cannabis Aromatised”, “Cannabis Health”, “Hemp Choice”, “Love Hemp”, “Wild Hemp”, “Medi Hemp”, “Know your cannabis” and “Hemp Fest”.
“Obviously ‘Weed Rules' wasn't going far,” laughs Humphreys.
The other hurdle lies within the description, Humphreys continues. “Even if they're not using anything that trivialises [cannabis] or is drug-related, people sometimes just use it in a very descriptive way because obviously a trademark that's descriptive or lacks distinctive character can't be registered.”
He adds: “We've had signs applied for as trademarks like ‘Cannabis’ [for a beverage product], which obviously is just completely descriptive. So even if there's no problem of trivialising or inciting the consumption of drugs, it's problematic in another way.”
Medicinal benefits
In the medical or therapeutic cannabis market, the legal scene is even more disparate, he adds.
“Bear in mind that this is a field that’s in constant evolution, but at the moment therapeutic or medical cannabis is legalised in a number of member states such as Denmark, Germany and Luxembourg. But there are a number of member states where this is an ongoing issue.”
Some member states still have a more restrictive policy, such as Hungary and Latvia, he continues, meaning that currently, you would not be able to use medical or therapeutic cannabis in all member states, even if you were able to obtain a registration for it.
“However, things are changing quickly,” says Humphreys. “I think that in the long term, the picture will change substantially.”
He points to a big case regarding the application for a medical cannabis product named “ Bavaria Weed”, which went from the EUIPO Boards of Appeal to the EU General Court.
“Now, even though it's perfectly OK in Germany [for example] to have medical cannabis, at an EU level, putting the word ‘weed’ in the sign is problematic—it's not just an innocent illusion.”
Humphreys refers to another case—involving an application for a trademark containing the words “ Cannabis Store Amsterdam” for CBD oils, foods and beverage products. “There the General Court considered that the sign’s reference to Amsterdam, with its reputation for ‘coffeeshops’, would trigger a narcotic association in the minds of the target public, compounded by the term ‘cannabis’.”
In pictures
Apart from the naming conventions, Humphreys adds that images are important too.
“Remember it's not just the words you use, but the images. So avoid using marijuana leaves in the trademark representation,” he advises. “It’s surprising how many CBD oil products have the cannabis leaf on their packaging. Having it in the trademark was a significant contributory factor in getting the applicant into trouble in the ‘Cannabis Store Amsterdam’ and the ‘Bavaria Weed’ cases.”
Also, there are obvious no-go areas, he adds, such as the application that went on appeal to the EUIPO Boards for a trademark with the words “ Terps Army”, and the image of a stylised skull with yellow eyes and a joint sticking out of its mouth.
“Surprisingly most of the goods that that mark was applied for were actually not recreational cannabis items, they were for CBD oils and other legitimate products,” he explains.
“But the minute you've triggered an association with subject matter that could be the focus of the war on drugs or that trivialises drugs, it doesn't matter what the products are. Even if they're the most innocent products, like hemp-infused teddy bears, it wouldn't matter.”
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