A recent decision of the General Court demonstrates that a trade mark may be refused if it is considered to be contrary to public policy in one or more of the EU Member States, even though the grounds of refusal might not apply throughout the EU.
On 19 December 2016, Ms Santa Conte (“the Applicant”) filed an EUTM Application for the mark CANNABIS STORE AMSTERDAM Logo (below), for goods in Classes 30 and 32 including “confectionery, chocolate and desserts” and “soft drinks” as well as for “Services for providing food and drink” in Class 43.
The EUIPO Examiner rejected the application as being devoid of any distinctive character, on the basis of Article 7(1) (b) – (c) and 7(2) of Regulation 2017/1001. The Applicant had offered to restrict her specification to the Class 43 services, but the Examiner refused the application in its entirety. The Applicant appealed.
In response to the Applicant’s observations, the EUIPO Second Board of Appeal explained that it was entitled to raise a new absolute ground for refusal which had not been raised by the original Examiner and went on to dismiss the appeal and refuse the application under Article 7(1)(f). This is the article that prohibits registration of:
“trade marks which are contrary to public policy or accepted principles of morality”.
The Applicant had submitted that the products sold under her mark contained only extremely low levels of the psychoactive chemical tetrahydrocannabinol (“THC”) and could be sold legally throughout the EU. However, the Board of Appeal considered that the Applicant had drawn attention to the concept of “cannabis” as a drug, by choosing to feature the word “CANNABIS” in the mark together with the leaf symbol. The Board considered that the Applicant could have chosen a term with different associations (eg “HEMP”) to indicate that the goods, while derived from the cannabis plant, would not contain THC. The Board further considered that the word “Amsterdam” in the mark would lead consumers to associate the goods and services sold under the mark with substances sold in coffee-shops in Amsterdam, which are authorised to dispense cannabis products containing levels of THC which cannot be sold legally in many other EU Member States.
The Applicant had also argued that the existence of other EUTM registrations of marks containing the word “CANNABIS” demonstrated that her mark should also be allowed. The Board of Appeal reviewed previous decisions on similar marks and noted that there had been no previous ruling on whether or not the word “CANNABIS” was subject to an absolute ground of refusal. However, the Board noted a previous decision of 27 October 2016 in which the mark KRITIKAL BILBO Logo was refused registration on the basis that the words identified a particular variety of cannabis with a high level of THC, used to produce marijuana which is illegal in many EU Member States. (Case R 1881/2015-1). The Board noted that this previous decision indicates that the legal protection of a trade mark which designates an illegal substance is contrary to public order.
The Board of Appeal acknowledged that the word “cannabis” on its own would not necessarily be understood to designate an illegal substance, but found that the mark CANNABIS STORE AMSTERDAM Logo as a whole was contrary to public policy and could not be registered as an EUTM.
The Board of Appeal held that it was not necessary for it to consider whether the original grounds for refusal under Article 7 (1) (b) and (c) also apply, since the ground for refusal under Article 7 (1) (f) applies to all of the goods and services covered by the application.
The Applicant called upon the General Court to annul the refusal of her application and order the EUIPO to pay costs. She submitted that the Board of Appeal had been in error in holding that her trade mark included a reference to “the symbol of a marijuana leaf” and further holding that this symbol refers to the psychotropic substance. The Applicant submitted that it is well known that “marijuana” is not a plant but a psychoactive substance, which is not obtained from the leaves of the cannabis plant but instead from “the dried inflorescences of female cannabis flowers”. Whether or not this is well known, the General Court found that the particular shape of the cannabis leaf is often used as a media symbol for marijuana. The General Court found that the Board of Appeal had supplied a detailed and thorough explanation of how it had reached its decision, and held that the inaccuracy identified by the Applicant did not mean that the Board had disregarded its obligation to examine the facts of its own motion and, in particular, the meaning of the sign for which registration was sought.
The Applicant had also submitted that the reference to “Amsterdam” in the mark was merely intended to refer to the origin of the cannabis used in her products, as well as to the style and atmosphere of the city from which she claimed to have derived the inspiration for her goods and services. The General Court did not accept this argument. The Applicant had not disputed that Amsterdam is known for coffee-shops which are authorised to sell psychoactive marijuana products. According to settled case law, even if a sign has multiple possible meanings it must be refused registration if one of those meanings would be the basis of an absolute ground for refusal.
The General Court held that the words “CANNABIS STORE AMSTERDAM” in the mark, coupled with the image of cannabis leaves: “is a clear and unambiguous reference” to the narcotic substance that would be sold in a coffee-shop in Amsterdam and which is illegal in many EU Member States.
The General Court acknowledged that cannabis is not an illegal substance if its THC level is below a certain threshold, but commented that cannabis products whose THC content is above 0.2% are illegal in most EU Member States. The actual THC content of the Applicant’s own products was held to be irrelevant because the decision had to be based solely on the perception of the relevant public. It was held that the relevant public could well expect the goods and services sold under the Applicant’s mark to correspond to those which would be sold in an Amsterdam coffee-shop, which would be illegal in most Member States.
Accordingly, the General Court found that registration of the mark was indeed contrary to public policy and dismissed the appeal.
This case demonstrates that if you are seeking protection across the whole of the EU, you need to recognise that morals and laws are not uniform throughout the EU. If your trade mark has a meaning, you will need to consider whether that meaning could be objectionable in any of the Member States. A trade mark attorney should be able to advise you about this.
For more information about patenting cannabis products for medicinal purposes, see our article of 23 August 2018 here: https://www.reddie.co.uk/2018/08/23/is-there-a-high-chance-of-us-and-uk-courts-grappling-with-medicinal-cannabis-patents
Decision date: 12 December 2019
Judgment of the General Court (Seventh Chamber)
Composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.