Cannabis – avoiding confusion with other cannabis trademarks: introduction on likelihood of confusion

Introduction

The first hurdle in obtaining the registration of your trademark is the examination on absolute grounds. Quite some trademarks containing references to the green gold are refused for descriptiveness or lack of distinctive character. Some are even considered contrary to public policy or accepted principles of morality. You can read more about this in our first article, available here.

The road to a registered trademark does not stop there. After the examination, your EU or Benelux trademark will be published for opposition purposes before being registered – that is, if no one successfully opposed your application for example on the basis of earlier rights. In this article, we take a look at this step in the life of a trademark application with specific reference to cannabis trademarks and goods.

Likelihood of confusion

While oppositions can be based on several grounds, the most common ground is likelihood of confusion (often dubbed LOC in trademark prosecution circles). This ground covers situations where the public would directly confuse a trademark application with an earlier trademark (mistake one for the other) and where it would make a connection between the conflicting trademarks and assume that the goods and services in question are from the same or economically linked undertakings (likelihood of association).

LOC is appreciated globally: all factors relevant to the circumstances are taken into account. Usually, the Office considers (i) the similarity of the goods and services, (ii) the relevant public and its degree of attention, (iii) the similarity of the signs taking into account their distinctive and dominant elements, and (iv) the distinctiveness of the earlier mark. Then, these factors are weighed up together with all other relevant factors at the stage of the global assessment (v).

Below, we will take a closer look at the similarity of goods and services, and the relevant public and its degree of attention in relation to cannabis-related trademarks .

(i) The similarity of goods and services

Goods or services can be classified in the same class under the Nice classification, but that does not mean that they are therefore similar. The Office will compare goods and services using criteria such as their nature and purpose, the distribution channels, the sales outlets, producers, method of use and whether they are in competition with or complementary to each other.

Cannabis trademarks can of course include all kinds of goods and services; a sign including a reference to cannabis is not necessarily a reference to cannabis goods. For this section however, we will focus on cannabis and cannabis-related goods. These include a whole range of products: think of cannabis for recreational purposes (class 34, the class that mainly includes tobacco and articles used for smoking), the unprocessed plant itself (class 31, together with other live plants), or processed in different forms for different purposes, for example cannabis for medical use (a term in the Harmonized Database in class 5) or as a special flavor in certain foodstuffs or beverages (e.g. classes 29, 30). As indicated earlier, whether or not all of these are ‘legal’ in all EU Member States is not relevant. They can still be included in a list of goods and services.

But how does cannabis as a product itself compare to other goods?

The Benelux Office for Intellectual Property (hereafter BOIP) considered dried marijuana and cannabis and marijuana for recreational use (class 34) similar to tobacco, stating that they ‘share a similar purpose and method of use’ and even coincide in their relevant public (BOIP, opposition decision 2014692, MOHAWK / MOHAWK, p. 10). The BOIP further notes that while it is not mandatory to mix weed with tobacco for consumption, it is nonetheless ‘an established practice reinforcing the link between both goods making them potentially complementary’.

The European Union Office for Intellectual Property (hereafter EUIPO) recently came to the same conclusion, stating – in cautious wording – that they are indeed ‘complementary to a certain extent’ (EUIPO, opposition decision no. B3130060, L & M / ML, p. 2). Interestingly, the EUIPO considered that tobacco and hemp, hemp extracts and hemp derivatives for smoking can even be in competition (EUIPO, cancellation decision no. C46969, SPECTRUM THERAPEUTICS / Spectrum Tobacco (fig.), p. 3).

Cannabis for medical purposes (class 5) on the other hand is included in the broad category of pharmaceutical preparations in the same class and is thus identical, according to the EUIPO (EUIPO, opposition decision no. B3132622, PRISMA SKIN / CANNPRISMA PREMIUM MEDICAL GRADE CANNABIS, p. 3).

On the other hand, the BOIP found no similarity between processed tobacco and tobacco products (class 34) and live cannabis plants (class 31). The EUIPO further considered that cannabis plants and unprocessed cannabis (class 31) are not similar to pharmaceutical preparations (even while those can include cannabis for medical purposes): they are ‘natural plants not prepared for immediate human consumption that have nothing in common with [pharmaceuticals]. Therefore [cannabis plants], not being finished products, cannot be intended for therapeutic use’ (EUIPO, opposition decision no. B3132622, PRISMA SKIN / CANNPRISMA PREMIUM MEDICAL GRADE CANNABIS, p. 3).

In line with the current practices in comparing goods and services, the EUIPO and the BOIP seem to make a clear distinction between the unprocessed cannabis plant as such and their applications. Future decisions will probably more clearly delineate which cannabis and cannabis derived products are similar or not. One might wonder where the Office would draw the line: after all, there are likely fewer steps necessary to get from a cannabis plant to cannabis for recreational purposes (in the sense that it is dried and thus ready for smoking). Furthermore, the link between cannabis plants and dried cannabis is a lot clearer for avid consumers of the latter. It is likely more common for cannabis users to buy some plants for homegrowing in the same outlet where they would be able to buy legal dried cannabis than it is for cigarette smokers to try and dry their own tobacco from the relevant plants. To be continued, without a doubt!

(ii) The relevant public and its degree of attention

The perception of marks in the mind of the relevant public of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion.
The first step is to define the relevant public; the second to define their degree of attention. When the relevant public consists of the general public, their degree of attention can still be high.
The degree of attention of the relevant public is a factor that can weigh for or against a finding of a likelihood of confusion. A high degree of attention of the relevant consumer may lead to the conclusion that the relevant consumer will not confuse the marks, despite the lack of direct comparison between the trademarks.

Smoking articles for example (tobacco and other class 34 products) are aimed at the general public, but the Boards of Appeal have repeatedly held that smokers are considered particularly careful and selective about the brand of cigarettes they smoke (‘brand loyalty’). The EUIPO has in one case simply applied this reasoning to the relevant public for recreative cannabis. While the analogy is understandable, this finding may be hard to substantiate: the professional sale and cultivation of recreative cannabis is still illegal in the majority of the European Union, although the regulatory landscape might move quickly following the legalization plans of several Member States.

It is possible that future consumers of (legal) cannabis will not have the same level of brand loyalty as cigarette smokers. We remind the younger reader that many cigarette brands could invest in intense advertisement for decades, thus building their brand. This is no longer possible in most EU Member States today, as advertising for cigarettes (and other products posing a risk to public health) is heavily restricted as is the consumption in public places.

Even with legalization efforts on the way, it is unlikely that future legal weed suppliers will have the same opportunities to build their brand.

The BOIP has already elaborated on this topic. Rather than applying the brand loyalty theory, they held that the specific legislative framework in place for the sale of cannabis products covered in class 34 make it so that the relevant consumer purchasing such product will display a higher than average level of attention.

In our opinion, the Office should not only take into account the legal status of the sale, cultivation or consumption of cannabis, but also whether one or more of these conducts are in fact decriminalized, as is the case in e.g. the Netherlands.

We look forward to seeing how the national trademark offices in the 27 EU Member States and the EUIPO itself will deal with this as the trademark applications for cannabis and cannabis-related goods continues to rise.

If you have any questions or comments, make sure to reach out to us.