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EU Blocks Registration for ‘Contrary’ Marijuana Trademarks (1)

Dec. 12, 2019, 5:09 PM

Logos implying sale of marijuana products can’t get trademark protection in the European Union because they’re “contrary to public policy,"an EU court said, posing a new challenge for companies seeking marijuana-related EU trademarks.

The public would perceive a sign reading “Cannabis Store Amsterdam” with green cannabis leaves in the background as referencing narcotics, the EU General Court said, upholding a EU Intellectual Property Office ruling.

The Dec. 12 decision doesn’t ban registration for all references to cannabis, which can be legal in most EU countries with a low enough concentration of marijuana’s psychoactive element. But the court effectively blocked registration for a mark that an average person would assume references narcotic marijuana use.

“I think it’s drawing a line in the sand on what’s acceptable and what’s not,” Michael Shaw, an attorney who heads the trademark team in the Manchester, U.K. office of Marks & Clerk, said.

Shifting Goalposts

Applicant Santa Conte, an Italian seller of baked goods and drinks, argued that nothing in its sign referenced any narcotic because the psychoactive substance in marijuana comes from cannabis flowers, not the leaf as pictured in its logo. But the public widely perceives the cannabis leaf as a symbolic representation of marijuana, and the reference to Amsterdam, whose internationally known coffee shops legally sell marijuana, reinforces that perception, the court said.

Shaw said he’s registered trademarks featuring marijuana leaves or “CBD"—cannabidiol, a non-psychoactive compound derived from cannabis. But the combination of three elements—leaves, the word cannabis, and Amsterdam—for a business selling food and drinks, proved “too much” for the EU court to permit a registered trademark, he said.

Marks that are contrary to public policy or morality, such as narcotic use or references to terror attacks or disasters, are typically subject to refusal, Shaw said.

“It’s very difficult to advise on those sorts of marks, because the goalposts are always shifting based on what is socially acceptable at a particular point in time,” he said. “Anyone using any mark containing some element of cannabis needs to be careful that the mark as a whole isn’t seen as related to cannabis as a narcotic.”

American Rules

U.S. law bars registration of trademarks for federally illegal drugs, including cannabis products with a tetrahydrocannabinol (THC) content above 0.03%. The U.S. Patent and Trademark Office often rejects applications for lack of clarity about whether the applicant seeks to cover goods illegal under federal law, according to agency records.

But the U.S., like the EU, allows registered trademarks for some legal low-THC products and as well as trademarks that reference marijuana unless they’re deceptively misleading, trademark attorneys say. The U.S. Supreme Court recently ruled that the Lanham Act’s bar on immoral trademarks was unconstitutional, undercutting the EU grounds for refusing the “Cannabis Store Amsterdam” mark.

The PTO has dedicated examiners who apply particular scrutiny to cannabis-related marks to ensure they cover legal goods, Lauriel F. Dalier, an attorney in Sterne Kessler Goldstein & Fox PLLC’s trademark and brand protection practice, said.

She also noted that trademarks which inaccurately describe a product or components, can’t be registered unless they acquire meaning to consumers beyond a literal interpretation. Deceptively descriptive marks that would mislead a consumer on the goods being sold can’t be registered at all, she said.

Dalier said a PTO decision would hinge on the public perception of whether it would mislead the public about the particular good being sold. A hemp leaf, for example, could be blocked as an inaccurate mark for baked goods because of widespread association between brownies and marijuana. But using one to brand a foodstuff without such an association could in theory get through. She said the bar for inaccuracy is high.

Joel Feldman, vice chair of Greenberg Traurig LLP’s trademark and brand management group, said the trademark office can get creative in how to block marks in gray areas.

“Coffee shop with leaf? They may say failure to function, they may say misdescriptive,” Feldman said.

The case is: Santa Conte v. European Union Intellectual Property Association, Ct. of First Instance (EU), Case T-683/18, Opinion 12/12/19

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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