Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 29/07/2016

HGF Limited

Delta House, 50 West Nile Street

Glasgow G1 2NP

REINO UNIDO

Application No:	014970818
Your reference:	T230541EP
Trade mark:	VAPZ WEED STIX
Mark type:	Word mark
Applicant:	VAPZ INC. 80 Bass Pro Mills Drive, Unit 11 Vaughan Ontario L4K 5W9 CANADÁ

The Office raised an objection on 22/01/2016 pursuant to Article 7(1)(f) EUTMR and Article 7(2) EUTMR for the reasons set out in the attached letter.

The applicant submitted its observations on 22/03/2016, which may be summarised as follows:

1. The goods are, as recognized by the office, everyday consumption goods. In other words, the goods are perfectly acceptable and commonplace goods the qualities and attributes of which the public are perfectly familiar with.

2. Irrespective of any association the public might make when presented with the words WEED STIX in general conversation, they will immediately recognize such use on legal products as being entirely fanciful. Essentially the average consumer will not have any realistic expectation that the goods so described are in any way illegal when supplied through normal trade channels.

3. The public will simply recognise that the use of the mark is intended to imbue commonplace goods with a certain edgy, exotic and slightly dangerous character. By way of example, the mark OPIUM is registered in respect of perfume (EU 10850964) and yet despite being the name of a highly addictive narcotic drug one presumes that it was deemed acceptable on the ground that the public will have no expectation that the commonplace product to which it is applied will contain the actual literal product.

4. Previously registered marks, in particular the marks ENJOY WEED (EUTM 11935814) and WEED (EUTM 11953387), each including class 34 goods, lend weight to the viewpoint that the mark applied for should be considered registrable.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) EUTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society.

The applicants’ main argument is that the public immediately recognizes the use of WEED STIX on legal products as being entirely fanciful. The applicant, therefore, presupposes that the goods will be used in a legal manner. However, this is not necessarily the case.

First, the goods are not as innocent as the applicant suggests. The goods applied for may be used to smoke marijuana. See for example the following hits from internet.

http://liquidweed.org/thc-e-liquid/

http://www.leafscience.com/2014/09/06/5-portable-marijuana-vaporizers-need-invest/

http://www.bustle.com/articles/77073-7-reasons-to-vaporize-weed-instead-of-smoking-it-you-modern-woman-you

https://en.wikipedia.org/wiki/Vaporizer_%28inhalation_device%29#Marijuana_vaporizers

Second, the use of cannabis is forbidden in several Member States of the EU, such as the UK and Ireland. In the United Kingdom, where English is the official language, Cannabis is illegal to possess, grow, distribute or sell in the UK without the appropriate licences ("Drug Laws". United Kingdom Home Office. Retrieved 2011-07-18.) But also in Ireland, another country where English is the official language, the use of cannabis is illegal. The most recent Misuse of Drugs (Designation) Order (S.I. No. 69/1998) lists cannabis, cannabis resin, cannabinol and its derivatives as schedule 1 drugs under the Misuse of Drugs Acts of 1977 and 1984. As a consequence manufacture, production, preparation, sale, supply, distribution and possession of cannabis is unlawful for any purpose, except under license from the Minister for Health.

In other words, the goods applied for may be used to smoke marijuana which is illegal and, therefore, contrary to public order in some Member States of the EU.

But even in Member States where the use of cannabis is allowed, the mark, to the extent it is understood, is likely to be perceived as contrary to public morality, as it incites people to use an unhealthy drug. Indeed, it is clear from the website extracts shown above that people are encouraged to vaporize cannabis instead of smoking it, as it is a more discrete way of using cannabis.

Therefore, this mark is in no way comparable to the mark Opium registered for perfumes and other personal care products, as suggested by the applicant. Where the goods applied for can be clearly used to for smoking cannabis, perfume and other personal care products cannot. Consequently, the public will understand that OPIUM on a bottle of perfume is fanciful, but when seeing the mark applied for on electronics cigarettes (in Class 34) and complementary goods (in Class 9), they will perceive the mark as offensive or contrary to public order due to its reference to an illegal or unhealthy drug.

Finally, insofar as the applicant stresses the importance of consistency and refers to the other similar EUTM registrations, it must be admitted that indeed the Office should strive for consistency. However, this consistency should be on the basis of the EUTMR, as interpreted by the European Union judicature (see judgment of 12/06/2007, T‑339/05 ‘Lokthread’, paragraph 56). Observance of the principle of equal treatment must, therefore, be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (see judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 67).

In the light of the foregoing, even if the Office has accepted similar trade marks, this does not alter the outcome of the case at hand. In any case, the Office has to examine every case on its own merits and cannot be bound by previous or erroneous decisions (see judgment of 08/07/2004, T-289/02, ‘Telepharmacy Solutions’, paragraph 59). The trade mark applied for has been found to be contrary to public policy and accepted principles of morality comply in accordance with Article 7(1)(f) EUTMR as interpreted by the European Union judicature and has therefore to be rejected for all goods applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(f) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14970818 is hereby rejected or all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Adriana VAN ROODEN