You can use EU trademarks to protect your cannabis brand, but there are a couple of issues that you must pay particular attention to.
Name and logo of your cannabis brand
It is possible to register your cannabis brand’s name and logo just like for any other product or service.
The requirements regarding distinctiveness and descriptiveness are always relevant, regardless of the industry. If the mark describes the products, it is not distinctive. For example, the EUIPO refused the below mark for CBD-containing products for being descriptive and non-distinctive:
Apart from the “normal” questions of descriptiveness and distinctiveness, there’s an additional aspect that is more relevant for cannabis-related businesses than for most other businesses. According to EU law (and that of most EU countries), a trademark application will be refused if it is “contrary to public policy or to accepted principles of morality”. This is relevant because the legal status of cannabis varies from country to country and in general, it is prohibited in most countries.
The main risk is that a cannabis-related trademark can be seen to encourage or promote the use of a prohibited substance. This happens often if the trademark contains the word “cannabis” or the image of a cannabis plant, such as in the mark below:
In the CANNABIS STORE AMSTERDAM decision the European Court noted in particular that the legislation and practice toward cannabis products are evolving in the EU and that there is no unanimous or predominant trend in the EU regarding the lawfulness of the use or consumption of products derived from cannabis whose THC content exceeds 0.2%.
A particular challenge for the owners of cannabis-related businesses is that even if there was a clear and predominant trend with respect to cannabis products and their acceptability, the registration objection applies even if the trademark would be objectionable even in only one member state. So even if the trend is towards liberalization, the registrability is assessed according to the most conservative and non-liberal EU member state. If the applied mark is contrary to public policy or accepted principles of morality even in one member state, it is sufficient to block the entire EU trademark application.
To make things more difficult for potential applicants, the EUIPO’s practice for assessing cannabis-related trademark applications is far from being consistent and predictable. For example, the following marks have been accepted:
It is unfortunately very difficult to predict how the EUIPO assesses a particular trademark application containing cannabis-related words and imagery.
Classification of goods and services
The second aspect relates to the classification of goods and services. There are two aspects of this: Firstly, the way it affects the acceptability of the mark from a moral and public policy point of view, and second, what are the proper classes for various cannabis-related products and services.
Starting with the first question, it seems that often an EU trademark containing cannabis-related words and imagery can be registered for cannabis-related products such as creams, essential oils, and medicinal products, but not for smoking-related products. For example, the EUIPO accepted the trademark THE CANNABIS SHOP By HEMP BROTHERS essential oils and aromatic extracts and unprocessed cannabis but refused it for tobacco and tobacco substitutes. The reasoning was that in relation to smoking products the average consumer understands that the word CANNABIS refers to a drug whose use is prohibited in most EU member states.
Often the line between what’s acceptable and what’s not acceptable is difficult to draw and sometimes the line is very artificial. For example, a cannabis joint could be something that is sanctioned by a medical professional or something that’s bought illegality on a street corner. Presumably the first is for medical purposes whereas the latter is for recreational purposes.
Making things more difficult, while the aforementioned trademark THE CANNABIS SHOP By HEMP BROTHERS was rejected for tobacco and tobacco substitutes, it was accepted for “cookies” in class 30. It is easy to understand some products cannot be used to get intoxicated (for example cosmetics and essential oils), but this certainly does not apply to consumables like cookies. It is strange that the mark was accepted for (cannabis) cookies but not for smoking products. This also highlights the difficulties and inconsistencies in assessing the registrability of cannabis-related trademarks.
Another question regarding the classification is simply how and in what classes the products are classified.
EUIPO’s “Harmonised database”, a database of terms that are acceptable for classification purposes has only three different products containing the word “cannabis”. They are the following:
Class 5 – Cannabis for medical purposes
Class 31 – Cannabis plants
Class 31 – Cannabis, unprocessed
The term “marijuana” is included only in “marijuana for medical purposes” in class 5. These are the only “pre-approved” terms the EUIPO has.
As in classification in general, it is often better to use broad terms. If you make bread, it is better to use the term “bread” in the list of goods than more detailed “sliced bread” or “gluten-free bread”. Better yet would be “bakery products” since it covers bread and other baked goods and therefore has a broader scope. Where cannabis is only a component of the end product, it is not necessary to mention that in the list of goods and services. For example, the term “essential oils” covers also essential oils containing cannabis. Here are some common categories that might be relevant for a cannabis-related business:
Class 3 – Cosmetics, essential oils
Class 5 – Pharmaceuticals and natural remedies, dietary supplements
Class 29 – Edible oils
Class 30 – Coffee and tea and their substitutes, bakery products, processed plant-based foods
Class 31 – Unprocessed plants
Class 32 – Non-alcoholic beverages
Class 34 – Tobacco products and tobacco substitutes
Class 35 – Retail of cosmetics, retail of food and beverages
Class 43 – Restaurants and cafes.
All of the above mentioned products would include products containing cannabis. It is not necessary (or sometimes even advisable) to use terms that specifically mention a component of a product, be it cannabis., wheat, or any other.
Conclusion
The attitudes towards cannabis products are evolving, so it is difficult to assess the registrability of trademarks that contain references to cannabis. The EU court is quite strict in its approach, but the EUIPO seems to be slightly more liberal. The most challenging case is where the brand name includes the word “cannabis” or is clearly derived from it, and the products in question contain tobacco and tobacco substitutes. The risk of refusal is high, even if the mark was sufficiently distinctive. The same would be the case for other drug-related terms, such as “joint”, “weed”, “pot” and the like in connection with tobacco products and tobacco substitutes.
To sum up, there is a heightened risk that your cannabis-related trademark is refused on grounds of public policy and morality if the brand has strong drug-related elements. If the brand name or logo is completely neutral and contains no inferences to drugs, there is no problem registering it for smokable cannabis in class 34. For example, just a few weeks ago (summer 2022) the EUIPO registered a trademark in class 34 for “dried cannabis” and “dried cannabis flowers for smoking purposes”.
