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

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article