Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A technical effect must still be evident in the original patent filing, the EBoA said in its G2/21 decision today, March 23
Brands should not be deterred from pursuing lookalike producers, and an unfair advantage claim could be the key, say Emma Teichmann and Geoff Steward at Stobbs
Justice Mellor’s highly anticipated ruling surprised SEP owners and reassured implementers that the UK may not be so hostile after all
The England and Wales High Court's judgment comes ahead of a separate hearing concerning one of the patents-in-suit at the EPO
While the rules allow foreign firms to open local offices and offer IP services, a ban on litigation and practising Indian law could mean little will change
A New York federal court heard oral arguments this week in a copyright case pitting publishing giants against a digital library