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Two rival medical cannabis companies have both had their trademarks invalidated at the UK Intellectual Property Office (IPO) in a dispute over marks covering products containing cannabidiol (CBD).
The decision was handed down in a consolidated hearing on February 25.
CBD Wellness sought an invalidation of the mark ‘Canabidol’, registered by a competitor with the same name. In turn, Canabidol held that CBD Wellness should not be allowed to trademark ‘Canidol’ under the law of ‘passing off’.
The IPO heard how Thomas Whettem set up Canabidol in September 2015, selling dietary and herbal supplements containing CBD—an active ingredient in cannabis derived from the hemp plant.
CBD Wellness became a customer of Canabidol in October 2017, but the two businesses parted ways following a disagreement two years later.
In February 2019, Whettem sought to register the word ‘Canabidol’ to cover dietary and nutritional supplements and medicines in class 5, and cosmetic creams in class 3, and the mark was registered in May 2019.
In October 2019, CBD Wellness opposed the registration, claiming that ‘cannabidiol’ is a common name that describes a cannabinoid substance found in cannabis plants and/or cannabinoid products.
According to the company, the average consumer will perceive ‘Canabidol’ as referring to cannabidiol ingredients and as designating the kind of goods covered by its earlier trademark, ie, cannabinoid products.
CBD Wellness also claimed that ‘Canabidol’ is highly similar to its 2018 mark ‘Canidol’ because it includes the dominant and distinctive elements of ‘Canidol’, that the contested mark covers identical or highly similar goods, and that it would lead to confusion on the part of the public.
Whettem countered that Canabidol will not be perceived as a reference to ‘cannabidiol’ because products containing that substance are commonly known as CBD or ‘cannabis oil’, not as ‘cannabidiol’.
He also argued that to the extent that ‘cannabidiol’ is used on the labelling of the products, it is only used in small print to indicate that the substance is one of a number of ingredients in the products.
The spelling of ‘canabidol’ is “significantly different” to ‘cannabidiol’, according to Whettem and the mark had acquired a distinctive character as a result of its substantial use covering other products dating back to September 2015.
Whettem further alleged that CBD Wellness’s mark is invalid because, due to its earlier use and reputation of ‘Canabidol’, the use of ‘Canidol’ is contrary to the law of passing off.
In June 2020, Whettem and Healthfoods jointly applied for the invalidation of the Canidol trademark claiming an earlier right in ‘Canabidol’, which had been used throughout the UK since September 2015 in relation to dietary supplements, vape liquid, rescue cream, capsules for oral use and teas, all containing “an active ingredient of CBD”.
Whettem and Healthfoods claimed that Canabidol goods were marketed by Remarkable Agency from September 2015 to March 2016 when the company sold its stock and goodwill to Healthfoods.
According to the applicants, Remarkable Agency and Healthfoods used ‘Canabidol’ under an informal licence from Whettem. Consequently, they held that the use of ‘Canidol’ constitutes a misrepresentation to the public. “This is because it would cause a substantial number of the public to believe that ‘Canidol’ and ‘Canibidol’ goods originate from the same business, which would damage the goodwill established under the latter mark,” they complained.
Consequently, at the date of the application to register ‘Canidol’, the use of that mark by CDB Wellness was contrary to the law of “passing off”, stated Whettem and Healthfoods.
A double blow
However, in a setback to both Canabidol and CBD Wellness, the IPO found in favour of both arguments. Firstly it disagreed with Whettem’s argument that the name of his business and products ‘Canabidol’ is the Portuguese word for ‘cannabidiol’, and is therefore descriptive.
The IPO also rejected his second argument that the average UK consumers of the goods at issue know the active ingredient by its acronym, ‘CBD’ rather than by its full name ‘cannabidiol’.
The IPO also found that the words ‘canabidol’ and ‘cannabidiol’ were highly similar.
“The aural difference could easily be lost in oral use, particularly as it comes towards the end of the words. I therefore find that a substantial proportion of average consumers, especially end-users of the goods at issue, are likely to perceive ‘Canabidol’ as ‘cannabidiol’” said hearing officer, James Allan.
But he also found CBD Wellness liable for ‘passing off’, finding there was a likelihood that a substantial number of Healthfoods’ trade and professional customers, or potential customers, would have directly confused ‘Canidol’ with ‘Canabidol’.
Consequently, he invalidated both parties’ trademarks and ordered them to bear their own costs.
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medical cannabis, CBD companies, UKIPO, Canabidol, CBD Wellness, Healthfoods