The Trouble with Cannabis Trademarks outside Canada
By Whitney Abrams, Business and Cannabis Law, and Sepideh Nassabi, Litigation and Registered Trademark Agent, with assistance from Victoria Craib, Student-at-Law
Canopy Growth is one of the world’s largest producers of cannabis and it should come to no surprise that Canopy Growth is seeking to protect its brand beyond Canada. In fact, Canopy Growth has applied to register the following trademarks in the United States - JUJU RX and JUJU HYBRID in relation to cannabis vapes.
Trademark laws in the U.S. governed by the federal Trademark Act, under which Canopy’s application was made. That legislation requires a bona fide intention on the part of a trademark applicant to use the mark in lawful commerce. Under the federal Controlled Substances Act (“CSA”), the possession of cannabis or related products is prohibited in any quantity for any purpose, even for medical purposes. Although the use and possession of cannabis remains illegal under federal law in the U.S., cannabis for recreational purposes is legal on a state-level in a select number of jurisdictions throughout the United States.
So, in a very clever attempt to circumvent the federal legislation’s prohibition, Canopy Growth relied on state laws in its trademark application. The United States Trademark Office rejected the application on the basis that it is federal legislation that is conclusive on lawfulness – not state law. Given the state of the laws in the country, the United States Trademark Office held that it was a “legal impossibility” for Canopy to maintain a bona fide, commercial use within the legal landscape. A link to the decision on that application is here.
The same type of reasoning has been used by countries outside of the United States. In fact, across the pond, the United Kingdom Intellectual Property Office recently invalidated a cannabis-related trademark registered by Addicted Originals Ltd. In this case, it was Adidas that sought an invalidation of Addicted Originals’ trademark on the basis that it looks a bit too much like its famous Trefoil mark. The two marks are below:
Adidas’s “Trefoil” mark, left. Addicted’s now invalidated mark, right.
Would you recognize the difference if you saw both logos?
In comparing the two marks, the United Kingdom Trademark Office was not convinced that the two marks were “confusing similar”, either directly or indirectly: overall, the marks have only a moderate degree of visual and aural similarity, and are conceptually dissimilar. The Office considered it unlikely that the average consumer would mistakenly recognize one mark as the other.
The reasons given by the UK Trademark Office also engaged unexpected matters of public policy. According to the Office, a continued registration of Addicted’s mark would be contrary to “accepted principles of morality” and undermine “principles of accepted social values” – though, in fairness, not for simply depicting a marijuana leaf. Rather, the Office expressed concerns that a cannabis leaf, in combination with the word “addicted”, promotes a dependency to illegal drugs exceeding mere recreational use. In light of these considerations, the Office invalidated Addicted Originals’ trademark registration.
Amendments to the Canadian Trade-marks Act and its Regulations which came into force in June, 2019, now enables Canada to accede to three international treaties on trademarks to allow Canadian businesses to protect their trademarks internationally and expand their businesses beyond Canada. Canadians, under the new regime, have an opportunity to file a single application to the World Intellectual Property Organization to seek protection in member countries under the Madrid Protocol.
First, the applicant must take the proposed mark to its “Office of Origin”, which in Canada is CIPO. In that application, the applicant will designate which member countries it chooses to designate to have international protection. The CIPO will do an initial certification of the application and then forward it to WIPO, who will do a formal examination before registering the mark in the International Register. Once the WIPO has issued a certificate of registration and notifies the designated contracting parties’ offices, that office will examine the scope of protection of the international registration in the context of that jurisdiction’s legal framework.
Although this would likely not have helped in the above two situations, we wonder if any Canadian cannabis companies seeking to extend Trademark protection beyond the Canadian border have considered registering according to the Madrid Protocol to avoid a multiplicity of applications. Certainly, the Madrid Protocol would be of much assistance in member countries where cannabis is legal.
This article originally appeared on Canada Cannabis Legal on August 26, 2019.