Candy packaging in 2D as a brand?
Legalize it®? On cannabis brands
Meanwhile, on the other side of the ocean recognizable trademarks for cannabis products are emerging, which of course have to be registered by their owners. In our country this is often very difficult: EU trademark applications that refer to cannabis are almost always refused because of a conflict with public order and decency. Annoying for entrepreneurs who are already looking ahead to a future legalization in the EU.
A neutral reference to the hemp plant in a trademark application will not always lead to refusal at EU level. Only if this sign contains elements reminiscent of the recreational use of cannabis will it be deemed contrary to public policy. The fact that a trademark is exclusively used for medical or industrial activities and not for the encouragement of cannabis use is not enough to be eligible for registration. It is not the use in practice but the perception by the public that determines whether a sign is acceptable or not. If a trademark evokes an association with recreational cannabis use in the general public, this trademark goes against the policy of those member states where cannabis use is illegal/criminal. A registration is then not possible.
In practice, it will be difficult to register a trademark that refers to cannabis in any way. In the Bavaria Weed case, the image of a small cannabis leaf and the use of the word “weed” were enough for refusal. These would generate associations for the general public with the recreational use of marijuana, despite the fact that the mark would only be used for therapeutic activities. Due to the general familiarity of the cannabis magazine, avoiding an association between this symbol and recreational cannabis use is very difficult.
As such, the EU Office remains strict on all brands that refer to cannabis in one way or another. This is based on the fact that the use of marijuana is illegal in several EU member states. However, member states’ policies on cannabis are changing rapidly: several have recently decriminalized the recreational use of cannabis and/or legalized its medicinal use. The EU Office is rather taking a wait-and-see approach to these evolutions. A brand that refers to cannabis use can only be registered if it is acceptable in every EU member state.
The EU does not yet seem ready for explicit “cannabis trademarks”. However, we have noticed that every now and then a scoundrel gets a trademark registered for activities that leave little to the imagination. We refer for example to the brands CANNABONG for cigarettes, tobacco mills and water pipes, LEGALIZE for items for smokers, and SWEEDLEAFS for CBD oil and cannabis flowers.
The EU Agency must oversee public order and morality throughout all of the EU. In the Benelux, morals are a bit looser and less use is made of this ground for refusal. See for example a trademark 420 DUTCH HIGHLIFE, registered in July 2021, among others for cannabis seeds and cannabis plants. Remarkable, if you know that growing cannabis plants is still in fact illegal in Belgium.
Internationally, a clear trend can be observed: legalization of (recreational) cannabis and acceptance of the culture that goes with it. If this trend also continues in the EU, trademark offices will have to adapt each time. What to do with the sale of medicinal marijuana, which is increasingly being legalized by EU states? What about the legal CBD shops, which only sell products with negligible THC content? The law does not specify which signs specifically go against public order or morality. As a result, trademark offices have to perform the test again and again, in line with the current situation.
Darts and bitter beer
The most commonly registered trademarks are images, words or combinations of both. This makes sense: the name of your product or service and your logo are the most important recognition points for consumers. As a company, you want to avoid these being copied by competitors.
But you can also protect other ‘signs’ as trademarks. This makes sense too, given that other elements also help consumers recognise that your company is behind a certain product or service
Did you know, for example, that the position of a specific element on a product can be registered as a ‘position mark’? Think of the red label on the pockets of a pair of LEVI’S trousers. In itself a trivial piece of fabric, but instantly recognised because it’s always in the same place. That is why it was protected as a position mark.
Every sign that serves as a recognition point for the consumer can be registered as a trademark. Think of holograms, sounds, colours, etc. You can then prevent someone else from using similar signs. We call these ‘non-traditional trademarks’.
Of all the non-traditional brands, scent marks are probably the most difficult to get registered. This is due to the criteria that non-traditional trademarks must meet to complete the registration process.
In particular, certain conditions apply when submitting the trademark application: how do you represent the sign you want to regsiter in the application? The conditions that apply in the EU were defined in the Sieckmann decision of 2002:
Firstly, the sign must be presented clearly, precisely and objectively. In addition, the representation must be easily accessible, intelligible and self-contained, so that everyone can find what exactly is protected. A chemical formula, for example, is not comprehensible to everyone. Non-chemists will not be able to define the scent represented by a chemical formula.
Finally, the representation must also be durable and objective. This means that an odour sample does not qualify as a representation, as the odour may dissipate or change over time and the specific odour of a substance is subjective.
In 2017, the rules for the representation of marks were relaxed. The former requirement that they be ‘graphically representable’ was removed. As a result, you can now, for example, upload an mp3 of a jingle in your EU trademark application. This makes sense, as almost anyone who has access to the trademark register can play an mp3.
For fragrances, there is not yet a standard way of presenting which is clear, precise, complete, easily accessible, durable and objective. We occasionally hear about machines being developed that can mimic scents, but these are not up to scratch yet and are certainly not easily accessible.
So although we are seeing more and more holograms, position marks, etc. appearing in the trademark registers, it will be some time before scent marks appear in the registers.
Actually, we should put it differently: before scent marks will appear in the registers again. Of course, trademark registrations already existed before the Sieckmann case of 2002. Some national trademark offices were less strict at the time, which led to the registration of a few scent trademarks in the 1990s.
And so we come to darts: one of the few remaining scent brands in Europe is a British brand for darts. In 1994, Unicorn Products managed to register ‘the strong smell of bitter beer’ as a trademark for darts. The specific scent released when opening their packaging was a recognition point for their flights and this was considered a registrable mark.
Trademark registration can be renewed every ten years, and Unicorn Products has consistently done so. As a result, they now own a rather unique right, at least until 2024: a scent mark registration.
Did you receive a ‘Notice of absence of formal requirements’ from the EUIPO?
Before publishing your EU trademark application, the EU Intellectual Property Office (EUIPO) will examine if the formal requirements are met.
If you are located outside of the European Economic Area, the deficiency will usually be a lack of local representation. The EUIPO’s notice will read along the lines of:
“No representative has been appointed. According to Article 119(2) EUTMR, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area must be represented before the Office in all proceedings other than filing an application for a European Union trade mark. The representative appointed must be from within the European Economic Area. Article 120(1) EUTMR sets out who may act as a representative before the Office. A list of representatives can be found through eSearch on the Office website.”
While companies from any country can file an EU trademark application, only those established in the EEA can do so without a local representative.
As registered EUIPO Trademark & Design Attorneys, we can help you solve this type of deficiency. For instance, the above issue can be solved by us registering at the EUIPO as the representative for your application. In most cases, the cost for this action is only € 70,00 per trademark application.
If you don’t remedy formal deficiencies, the EUIPO will refuse your trademark application. You will not get your filing fees refunded.
The deadline to remedy the deficiency will be mentioned on the EUIPO’s notice. It’s usually 2 months. So don’t hesitate, and contact us for assistance.