Can you register a trademark for 'weed?'
Given the ongoing trend of legalization for cannabis and cannabis-derived products observed in the EU in recent years, it is only logical that many are beginning to invest in the market as a serious profit opportunity.
The 2021 edition of the European Cannabis Report, released in March by industry consultants Prohibition Partners, estimated that the European cannabis market would be worth €3.2 billion ($3.75 billion U.S.) by 2025. This represents a massive 67.4% compound annual growth rate from its 2021 value of €403.4 million. Currently, Germany constitutes more than half of that market (about €200 million) and is expected to maintain this proportion until 2024. By 2025, Germany is anticipated to introduce fully legalized cannabis access for adult use, by which time, its domestic market value is predicted to have more than doubled to €840 million.
Across virtually all industries, diligent Intellectual Property (IP) protection can be one of a company's biggest advantages, and the burgeoning cannabis vertical is no exception. Such a high-potential growth sector is sure to attract a large number of operators in the near future. If you intend to be one of the first players on the field as legalization gains momentum across Europe, it is of the utmost importance that you clearly define your brand in this nascent market and distinguish it from any copycats. After all, it is a lucrative market share, and not only your valuable IP, that is up for grabs.
A solid and memorable trademark is ideal for this purpose. However, before you begin brainstorming brand names, logos and other potential marks for your cannabis-related goods and services, you must consider how IP offices might view certain would-be marks. The recent decision by the Court of Justice of the European Union (CJEU) in the Bavaria Weed case — which ruled against the applicant — is an excellent example of one of the pitfalls.
The mark's filing and initial rejection
In June 2018, German company Bavaria Weed GmbH filed an application with the European Union Intellectual Property Office (EUIPO) for a figurative mark to represent its services related to cannabis for therapeutic purposes. The simple design stylized the company's title-case name as one word, flanked on the left by the dark silhouette image of a lion holding a cannabis leaf.
Cannabis became legal for medical use in Germany in 2017, and though full legalization has been seriously considered ever since, it remains illegal for recreational purposes under the German Federal Narcotics Act. As such, it is not entirely surprising that the EUIPO refused to register Bavaria Weed's proposed trademark on the grounds that it ran contrary to public order. In a decision reached not long after Bavaria Weed's application was filed, examiners argued that the use of the term "weed," which is generally associated with cannabis's recreational use as a depressant, has put the mark in conflict with Article 7(1)(f) of Regulation 2017/1001 by promoting and trivializing a criminal activity — despite the company's known status as a purveyor of therapeutic cannabis.
The company clarifies therapeutic value in appeal
Bavaria Weed appealed the EUIPO's decision, and their case eventually reached the CJEU in April 2020. The company's argument began by positing that because the intended use of their product was therapeutic and not indulgent, a mark defining it could not be in defiance of public morality. Bavaria Weed also argued that the EU's increasingly favorable view of cannabis legalization — for both medical and recreational use — undermined the EUIPO's claim that it was protecting the public from the promotion of criminal activity.
Regarding their use of the word "weed," the company stated that the prevalence of English speakers within the EU meant that it was a sensible term to employ, especially given that medical cannabis is legal in several countries where English speakers are relatively common.
CJEU hoists Bavaria Weed by its own petard
Unfortunately for Bavaria Weed, when the Tenth Chamber of the CJEU's General Court reached its opinion, some of the company's own arguments were used against it.
The Court explained that the word "weed," combined in the mark with a graphic representing the cannabis leaf, is often used to depict the depressive and mild psychoactive qualities of marijuana sought by its non-medicinal users. Regardless of what the future might hold, recreational marijuana is currently illegal (albeit often decriminalized) in many EU member states based on public health policy, and the CJEU considered this reason enough to uphold the EUIPO's conclusion that the would-be trademark defied public order.
Furthermore, most doctors who prescribe cannabis-based medicines and treatments do not refer to it as "weed," as the term is tied almost exclusively to recreational marijuana. Thus, CJEU judges confirmed that the sign promoted, or at least trivialized, the use of an illegal substance, and subsequently dismissed Bavaria Weed's appeal attempt.
Name, name, what's in a name?
With the above precedent set, it is likely that marks containing the term "weed" will probably be refused by the EUIPO as trademarks for therapeutic cannabis products and related services, at least for the foreseeable future.
However, terms such as "hemp," "cannabis," "sativa" and "CBD," as well as images of the cannabis leaf in combination with other elements, have been successfully registered with the EUIPO. The conclusion to be drawn from this contrast is that semantics matter and that avoiding terms with more historically negative associations may be a simple way to clear this hurdle. Additionally, it is worth noting that the German Patent and Trade Mark Office (DPMA) did register Bavaria Weed's mark. With this in mind, opting for national filings may prove a more efficient way to proceed for the time being, particularly if rebranding is not an option.
Even with legal changes potentially on the horizon, local regulations can still hold up trademark registration for cannabis-related goods and services. As such, it is essential to turn to the IP law experts at Dennemeyer & Associates for information and counsel on this complex and shifting issue. Even before registration, we can help you avoid sticky situations and legal knots, assisting your efforts to search for and register a mark that can raise you above the competition.
This article was first published on the CITMA website, September 14, 2021.