6 November 2020TrademarksSarah Morgan

Cannabis company Hexo drops TM suit

Hexo, a Canadian-based cannabis company, has settled a trademark infringement suit against a Californian business it accused of selling CBD products using the Hexo name.

The settlement, which was announced yesterday, November 5, will see Assi Project Management subject to a permanent injunction. This will stop the Californian company from using or registering a company name, trademark, or domain name that contains the term Hexo or any similar term.

Back in October last year, Hexo sued Assi and its principals over unfair competition and trademark infringement at the US District Court for the Southern District of California.

According to the suit, Assi was selling CBD products and services—including health and wellness products, tinctures, and beauty products—under the name HEXOCBD.

“Defendants’ use of ‘HEXOCBD’ communicates to consumers an association, affiliation, or connection between defendants and plaintiff, which does not exist, is in bad faith, and is a deliberate attempt to confuse consumers,” said the suit.

As part of the settlement, Assi has also agreed to destroy any materials which contain a reference to ‘HEXOCBD’ and delete any reference to the term Hexo from websites and social media.

Assi had also filed two trademarks for ‘HEXOCBD’ at the US Patent and Trademark Office in August 2019. Under the settlement, Assi also had to file notices of abandonment for its trademark applications. This seems to have already been completed in August this year.

Finally, Assi has transferred and assigned all domain names it owns containing Hexo or any similar term to Hexo.

Roch Vaillancourt, general counsel for Hexo, said: “The Hexo brand is sufficiently established, both in Canada and in the US, that if another company—in the same industry, no less—uses it as a part of its mark, Hexo believes the situation creates confusion for the consumer and potential for reputational issues, and is ultimately a fair competition issue.”

The Canadian company said that it has been using Hexo as a trade name and mark since at least June 2018 and, with the advent of legalisation in Canada, has fully adopted the name for use in connection with its products and services.

Sebastien St-Louis, CEO and co-founder of Hexo, said: “I’m pleased we were able to reach a settlement, as it is recognition that consumers associate the Hexo mark with our company and sends a message that we will not tolerate violations of our trademark rights.”

Earlier this month, we featured Catherine Lemay, assistant general counsel–IP, Hexo, in our career series.

Lemay began her career in IP working for the Canadian Government (Health Canada) in a group responsible for administering the Patented Medicines (Notice of Compliance) Regulations, the Canadian version of the “Orange Book” regime in the US. Now, she is responsible for all IP-related activities at Hexo.

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