EUIPO conference: Avoid TM cannabis slang ‘like the plague’
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EUIPO conference: Avoid TM cannabis slang ‘like the plague’

Gordon-Humphreys-RHS-EUIPO-IPCLC2022Alicante
The EUIPO's Gordon Humphreys (R) in discussion with fellow panellist Francesco Mattina (L)

The chair of the EUIPO’s First and Third Boards of Appeal gave an entertaining rundown of how examiners weed out cannabis trademarks

Cannabis trademark filers should choose their words carefully and “avoid like the plague” any slang words associated with the plant, said the chairperson of the EUIPO’s First and Third Boards of Appeal at a conference in Alicante today, July 7.

Gordon Humphreys, speaking on a panel moderated by Managing IP’s senior reporter Max Walters at the IP Case Law Conference, gave an overview of cannabis trademark filings and how the EUIPO boards approach them.

As he delved into the background, he mistakenly said the European Commission had been cultivating hemp – rather than discussing the issues around it – prompting plenty of laughter among the audience and a slightly sheepish self-correction from Humphreys himself.

He soon noted that EU cannabis filings have boomed in the past few years, though three quarters of them never make it onto the register.

That’s partly because there is no specific EU-wide legislation dealing with cannabis marks, he explained, but also because of the challenges such marks face when it comes to public policy, lack of distinctiveness, and descriptiveness.

Public policy is the biggest sticking point, particularly as EU member states’ norms vary greatly, Humphreys added.

The boards therefore often focus on the perception of consumers “with reasonable sensitivities and thresholds”, and those who encounter cannabis signs in their day-to-day lives.

“So it’s not acceptable to have a sign that trivialises the war on drugs,” he gave as one example.

However, cannabis filers often don’t help themselves in their choice of names, Humphreys added, noting that “imagination is often sorely lacking”.

Reflecting on two rejections, he said the boards vetoed a figurative application for simply ‘Cannabis’ (beers and alcoholic beverages), and another for ‘Cannubis’ (e-publication on medicinal cannabis), both for being descriptive.

Humphreys ended by saying cannabis applicants should avoid drug-related imagery or symbols, as well as colloquial terms like ‘pot’, and should minimise or omit references to ‘cannabis’ or ‘hemp’.

He reminded the audience that trademark registration doesn’t guarantee usability, owing to a separate regulatory system for cannabis products.

The two-day conference ends tomorrow, July 8. You can read more coverage here.

more from across site and ros bottom lb

More from across our site

CMS, which was told to respond to a cancellation action by February 12 but filed its response a day later, has rowed back on claims about an IT error
The deal could help Rouse gain a foothold in Australia and New Zealand for the first time
With a team of more than 80 patent lawyers and attorneys across 21 European offices, the firm is acting in some of the most high-profile UPC cases
Lippes Mathias has hired three partners and a counsel from Offit Kurman
External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
Gift this article