CANCELLATION No 34004 C (INVALIDITY)

Spectrums Europe French joint stock company, 1 rue de Stockholm, 75008 Paris, France (applicant), represented by Ipside, 4, rue de Kérogan, 29337 Quimper, France (professional representative)

a g a i n s t

Spectrum Cannabis Canada Ltd., 1 Hershey Drive, Smiths Falls Ontario K7A 0A8, Canada (EUTM proprietor), represented by Plougmann Vingtoft A/S, Strandvejen 70, 2900 Hellerup, Denmark (professional representative).

On 19/05/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 17 068 115 ‘SPECTRUM CANNABIS’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 5: Medical marijuana and cannabis and derivatives thereof; hemp-based dietary supplements for general health and well-being, hemp-based protein powder (dietary supplements), protein and fibre powder (dietary supplements), meal replacement bars; Medicinal herbal extracts for medical purposes namely medical cannabis and marijuana extracts; Medicinal herbal preparations, namely marijuana preparations including dried flower and marijuana derivatives that may be legally produced, namely liquids, oils, oral sprays, capsules; Medicinal cannabis oils; pharmaceutical products for administering administration of medical marijuana and cannabis namely, buccal sprays for administration of medical marijuana and cannabis through the mouth, gel caps for oral administration of medical marijuana and cannabis, and transdermal patches for administration of medical marijuana and cannabis through the skin; Hemp based beverages for medicinal and health purposes; Cannabis based beverages for medicinal and health purposes; Pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases, the relief of pain, the treatment of acne, the treatment of chronic pain, the treatment of glaucoma, the treatment of headaches, the treatment of inflammatory connective tissue diseases and injuries, the treatment of inflammatory muscle diseases and disorders, the treatment of metabolic disorders, namely diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism, the treatment of psychiatric diseases; namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia, the treatment of skin irritations, namely bee stings, sunburn, rashes, sores, corns, calluses, and acne, the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries, wounds; topical anesthetics; delivery systems in the nature of topical applications, namely, foams, gels, creams, sprays, lotions and ointments which act as a base and prepare the skin to receive therapeutic preparations that are absorbed into the blood stream through the skin; Analgesic preparations; antibiotic preparations.

Class 35: Development, management and operation of businesses in the healthcare industry, the medical marijuana industry and the high-technology industry; Advice and information concerning commercial business management; business management supervision; business planning; Rental of storage space; Marketing namely direct marketing of the goods and services of others, marketing services in the field of arranging for the distribution of the products of others, and digital marketing of the goods and services of others via websites, e-mail, apps, and social networks; Sale and distribution (not transport) of medical marijuana and cannabis, cannabis oil and derivatives thereof; Sale of food products, beverages, personal care preparations, skin care preparations, clothing and fashion accessories, stationery and printed materials; Marketing of medical marijuana through the administration of an assisted pricing program, sale and distribution of medical marijuana, and providing an assisted pricing program in the field of medical marijuana; Sale and distribution (not transport) of medical marijuana and cannabis and equipment and products for administering medical marijuana and cannabis namely hand pipes, water pipes, hookahs, nebulizers, atomizers, oral vaporizers, buccal sprays, gel caps, cannabis infused lotions, balms, oils and creams, and transdermal patches; Retail services in relation to nebulizers, atomizers, buccal sprays, gel caps, cannabis infused lotions, balms, oils and creams, and transdermal patches for administering drugs and vaporizers for medical purposes; Sale of lighters, matches, ashtrays, cigarette rolling machines, cigarette holders.

Class 40: Processing of medical marijuana; production of medical marijuana for others.

Class 41: Medical education services in the field of marijuana and cannabis; educational services in the field of marijuana.

Class 44: Medical marijuana and cannabis dispensary services; Operation of a wellness centre for medical marijuana patients providing physician referral services; Medical counselling services in the field of marijuana, cannabis and cannabis oils; Medical information services in the field of marijuana and cannabis; Providing medical information; Consulting and advisory services in the field of medical marijuana and cannabis; Cultivation and breeding of medical marijuana; Consulting services in the fields of horticulture, medical marijuana; Providing a website featuring information in the field of medical marijuana and cannabis; Providing a website featuring the ratings, reviews and recommendations on marijuana and medical marijuana products, the indications and effects of particular cannabis strains, the benefits of medical marijuana, marijuana, cannabis; Rental of hothouse and greenhouse facilities for horticulture.

Class 45: Consulting and advisory services in the field of medical marijuana, marijuana and cannabis licensing.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (f) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark ‘SPECTRUM CANNABIS’ should not have been registered as it is descriptive for the concerned goods and services and lacks distinctive character. It could also be contrary to public policy or to accepted principles of morality.

According to the applicant, the words ‘SPECTRUM’ and ‘CANNABIS’ are English words but, since there are very similar equivalents of them in the other European languages, they will be understood throughout the European Union. The combination of the two words ‘spectrum’ and ‘cannabis’ has no immediate and precise meaning. Although this combination is not common, it informs immediately the consumers that the goods and services concerned are in relation with health and drugs and more particularly with cannabis. Therefore, the trade mark ‘SPECTRUM CANNABIS’ evokes any range or scale of cannabis and it is descriptive for the goods and services covered by the registration.

The applicant adds that combining these descriptive elements together without introducing any usual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign. Therefore, the expression ‘SPECTRUM CANNABIS’ provides direct information as to the characteristics of the goods and services for which the trademark benefits for protection.

Furthermore, the applicant states that the contested mark also lacks any distinctive character as the combination of these two words in that grammatical structure is immediately understood by the relevant public.

Finally, the applicant considers that the word ‘CANNABIS’ included in the contested mark is considered contrary to public policy and to accepted principles of morality. It points out that it cannot be considered to registering a trademark which praises cannabis when the consummation, use or sale of this product is considered illegal by some countries in the European Union. In support of its allegations, the applicant quotes previous decisions from the Office of signs that have been refused for registration including the elements ‘SPECTRUM’ or ‘CANNABIS’.

In support of its observations, the applicant filed the following evidence:

• Exhibit 1: an extract from the WordReference website showing the meaning of the term spectrum.

• Exhibit 2: an extract from Wikipedia showing the meaning of the term spectrum.

• Exhibit 3: several extracts from the Google Translate showing the translation of the word spectrum from English into Danish, German, Luxembourgeois, Dutch, Norwegian, Slovak, Swedish and Czech.

• Exhibit 4: several extracts from the Google Translate showing the translation of the word spectrum from English into Slovenian, Romanian, Lithuanian, Latvian, Croatian, Estonian, Finnish, Irish and French.

• Exhibit 5: an extract from the WordReference showing the meaning of cannabis.

• Exhibit 6: several extracts from the Google Translate showing the translation of the word cannabis from English into French, German, Luxembourgeois, Latin, Norwegian, Danish, Spanish, Swedish, Finnish, Romanian and Icelandic.

• Exhibits 7-9: three decisions from the Office refusing the registration of signs including the word ‘SPECTRUM’.

• Exhibits 10-11: two decisions from the Office refusing the registration of signs including the word ‘CANNABIS’.

• Exhibit 12: an extract from Wikipedia showing Trouble du spectre de l’autisme.

• Exhibit 13: an extract from Wikipedia about Autism spectrum.

• Exhibits 14-15: several extracts from websites showing the expression Full Spectrum in the description of the products.

• Exhibit 16: an extract from Google showing the results of the search Full spectrum vs Broad spectrum.

• Exhibit 17: several articles explaining the difference between CBD isolate, Full spectrum and Broad spectrum. CBD is an active ingredient in cannabis. CBD isolate is the purest form removing all the other compounds. Full spectrum CBD is an extract that contains all compounds found naturally occurring in the plant, including terpenes, essential oils, and other cannabinoids. Broad spectrum is a mix of the other two excluding THC (Tetrahydrocannabinol). THC is one of at least 113 cannabinoids identified in cannabis.

• Exhibit 18: an article from Santé Log about medical cannabis.

• Exhibit 19: several extracts from the Wayback Machine dated 2016-2017 showing websites mentioning Hemp Oil and the Full Spectrum.

• Exhibit 20: several extracts from the proprietor’s website. They include Spectrum as a straightforward colour-coding system that simplifies the understanding of
  medical cannabis.

• Exhibit 21: a decision from the Office refusing the registration of the sign ‘FULL SPECTRUM’.

• Exhibit 22: an extract from the EUIPO database showing the application for the sign ‘FULL SPECTRUM ENDOSCOPY’ for goods in Class 10 that was rejected.

• Exhibit 23: a decision from the Office refusing the registration of the sign ‘CANNABIS CRYSTALS’.

• Exhibit 24: a decision from the Office refusing the registration of the sign ‘CANNABIS ZERO’.

• Exhibit 25: decision of 14/03/2016, B 2 502 253.

• Exhibit 26: decision of 20/11/2018, B 2 956 160.

• Exhibit 27: a decision from the Office refusing the registration of the sign ‘CANNAFEST’.

• Exhibit 28: a decision from the Office refusing the registration of the sign ‘puracannabis’.

• Exhibit 29: a decision from the Office refusing the registration of the sign ‘CANNABIS WIRED VIP’.

• Exhibit 30: Decision of 31/08/2018, R2181/2017-2, ‘CANNABIS STORE AMSTERDAM (fig.)’.

• Exhibit 31: an extract from Wikipedia Législation sur le cannabis.

• Exhibit 32: a map of the World Medical Cannabis Laws.

• Exhibit 33: an extract from Wikipedia regarding the word rainbow in which definition the element spectrum is included.

• Exhibit 34: a copy of the decision rendered by ADR Center of the Czech Arbitration Court on 20/02/2019 about the disputed domain SPECTRUMEUROPE.COM.

The EUTM proprietor argues that the mark ‘SPECTRUM CANNABIS’ is distinctive and not descriptive in relation to the goods and services protected and it will not be perceived as being contrary to public morality and public policy. The proprietor considers that none of the meanings of the mark ‘SPECTRUM CANNABIS’ listed by the applicant in its submission can be seen as directly descriptive for the goods and services covered by the contested mark. It explains that, even if it is taken that the population in the European Union knows that ‘SPECTRUM’ is an English word, it strongly contests that the majority of the consumers knows the exact meaning of the word. The said term is not a common word and it is rarely used. According to the proprietor, the relevant public may not be familiar with the meaning of the element ‘SPECTRUM’ therefore in this case, it is the element that provides the distinctive character to the contested mark.

Furthermore, the proprietor denies that the primary and immediate meaning of the contested mark will be perceived as “scale of cannabis” by the relevant consumers as claimed by the applicant. Even if this is how the relevant consumers perceive the meaning of the words, seen as a whole, it is not direct and clear what “scale of cannabis” actually means. Instead, the word ‘SPECTRUM’ is used in the meaning of “a band of colours, as seen in a rainbow”. According to the proprietor, the combination of the words ‘SPECTRUM’ and ‘CANNABIS’ does not give any immediate meaning in relation to the goods and services covered by the registration and will be seen by the majority of the public in the European Union as an unknown and an unexpected combination, hence the mark will be seen as distinctive. It reasons that the mark, when seen as a whole, is sufficiently tenuous that the consumers will need to employ a degree of imagination and speculation in order to receive any descriptive meaning.

Finally, the proprietor argues that the contested trade mark does not go directly against the basic moral norms of society. In relation to the registered goods and services, ‘medical cannabis” is otherwise accepted in the majority of countries within the European Union. The proprietor states that public policy and the principle of morality change over time and the legalization of cannabis and medical cannabis has rapidly changed the evaluation regarding trade marks containing the element ‘CANNABIS’. It mentions that the decisions from the Office quoted by the applicant in which the applied marks contain the word ‘CANNABIS’ are not comparable to the present case.

In support of its observations, the EUTM proprietor filed the following evidence:

• Annex 1: an extract from the EUIPO’s database showing registered marks containing the word ‘SPECTRUM’.

• Annex 2: an extract from the EUIPO’s database showing refused marks containing the word ‘SPECTRUM’.

• Annex 3: copies of registration certificates of the mark ‘SPECTRUM CANNABIS’ being registered by the proprietor in, among others, Colombia, the EUIPO, Finland, Germany, Peru, Poland, Sweden and Great Britain.

• Annex 4: copies of marks registered before the EUIPO containing the word ‘CANNABIS’.

• Annex 5: copies of marks registered within the EU containing the word ‘CANNABIS’.

• Annex 6: several extracts showing trade marks containing the elements “gun”, “weapon” or “murder”.

In reply, the applicant reiterates its previous arguments. It states that, contrary to the proprietor’s arguments, the word ‘spectrum’ could be recognized and understood by a large majority of the European consumers who will associate it with the word they use in their mother languages due to the phonetic and visual similarities that exist between these words. It reiterates that the word ‘SPECTRUM’ has a meaning when it is used in connection with cannabis or drugs and it reminds that the distinctive character of the sign has to be established in relation to the goods and services concerned and not to others.

Furthermore, the applicant points out that the trade mark ‘SPECTRUM CANNABIS’ suggests that the designated products and services are in relation with cannabis but more specifically with the full spectrum of cannabis. It adds that the wording « full spectrum » used in the field of cannabis refers to goods that contain all the cannabinoids of the plant including THC (tetrahydrocannbinol), a substance which is prohibited in Europe. Therefore, the contested mark will be seen as an incentive to consume cannabis whose consumption is prohibited or, at least particularly regulated, THC being totally prohibited in Europe.

Finally, the proprietor reiterates its previous arguments. It disagrees that the majority of the people living within the European Union knows the meaning of the English word ‘spectrum’ and it is not a frequently used word. It also denies that the word ‘spectrum’ could be considered descriptive of the goods and services in relation to the field of drugs and medicines. The combination ‘spectrum cannabis’ has no clear meaning for the majority of the European consumers. According to the proprietor, a trademark consisting of ordinary words may still be registered, if the combination of the terms is unusual. For the majority of the consumers in the European territory, the words ‘SPECTRUM CANNABIS’ will be seen as an unknown combination where the consumer has to use some imagination to associate the word ‘spectrum’ with drugs or cannabis.

Finally, the proprietor does not agree with the applicant’s finding that the trademark ‘SPECTRUM CANNABIS’ suggests that the designated products and services refer to goods that contain cannabinoids including THC (tetrahydrocannbinol). It is highly unlikely that European consumers would interpret the trademark in such a way as nothing in the trademark refers directly to THC.

The proprietor reasons that, in any case, the contested mark does not refer to anything illegal. The THC is not prohibited as a substance included in medical marijuana and as the trade mark concerns goods and services relating only to medical, not recreational marijuana, even if the consumers interpret the trademark as relating to THC (which is highly unlikely), such a link would not be contrary to public policy. Medical marijuana as a drug prescribed by doctors is by no means contrary to public policy or to accepted principles of morality.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. Thus Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 31).

The descriptive character of a trade mark must be assessed in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (20/03/2002, T‑356/00, Carcard, EU:T:2002:80, § 25).

Article 7(1)(c) EUTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods. Sometimes this is also referred to as vague or indirect references to the goods (31/01/2001, T‑135/99, Cine Action, EU:T:2001:30, § 29).

It should also be taken into account that the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. In accordance with the same case-law, for a sign to come under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods/services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods/services in question, or one of their characteristics. Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (10/02/2010, T‑344/07, Homezone, EU:T:2010:35, § 21).

In the present case, the contested goods and services are the abovementioned in Classes 5, 35, 40 41, 44 and 45.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’, used in the proprietor’s list of goods in Class 5, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. However, the term ‘namely’ used in the list of goods and services in Classes 5 and 35 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

The Cancellation Division considers that the goods and services at issue are targeted at the general public and at the specialized public in various fields from medicines and pharmaceutical preparations to services such as the sale, marketing, processing, education and consulting, the majority related to marijuana. In this case, both professionals and average consumers will display a relatively high level of attention when purchasing these goods and services and will take accurate information when buying them, particularly because of the consequences some of them may have on the health and well-being.

The applicant argues that, the words ‘SPECTRUM’ and ‘CANNABIS’ are English words but, since there are very similar equivalents of them in the other European languages, they will be understood throughout the European Union. On the other hand, the proprietor explains that even if it is taken that the population in the European Union knows that ‘SPECTRUM’ is an English word, it considers that the majority of the consumers does not know the exact meaning of the word.

The term ‘SPECTRUM’ is an English word meaning, among others, the distribution of colours produced when white light is dispersed by a prism or diffraction grating; any range or scale, as of capabilities, emotions, or moods. Indeed, since close variations thereof exist in other languages of the European territory (‘espectro’ in Spanish and Portuguese, ‘spectre’ in French and ‘spettro’ in Italian, ‘spektrum’ in German, Czech, Danish and Swedish, ‘spektri’ in Finnish), it is reasonable to assume that the majority of the consumers in those countries will perceive the meaning of the word ‘SPECTRUM’ as equivalent to their words in their respective languages. In the same vein, the word ‘CANNABIS’ is a term that exists as such in English, German, Dutch and French meaning, among others, the hemp plant when it is used as a drug; the drug obtained from the dried leaves and flowers of the hemp plant, which is smoked or consumed for its psychoactive or medical properties and almost the same word exists in other languages of the European territory, for instance, Spanish, Portuguese and Romanian (‘canabis’).

In any case, the Cancellation Division considers that since the contested mark is composed of the words ‘SPECTRUM’ and ‘CANNABIS’ which both exist in English, the examination will be carried out in relation to the English-speaking public at the time of filing of the contested EUTM (02/08/2017).

In assessing the meaning of ‘SPECTRUM CANNABIS’ from the point of view of the relevant public, the whole expression must be found to constitute a characteristic of the goods under Article 7(1)(c) EUTMR. The mere fact that each of the components is descriptive does not mean that the word combination shares that descriptive character.

As said above, for the purpose of applying Article 7(1)(c) EUTMR, it is necessary only to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) EUTMR are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. A sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (10/03/2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, § 50).

The Cancellation Division considers that the applicant failed to prove that at the time of filing of the contested mark (02/08/2017) the contested mark was perceived as describing the goods and services in question for the reasons stated below.

Firstly, the contested mark is a word mark which consists of the words ‘SPECTRUM’ and ‘CANNABIS’. As stated above, the term ‘CANNABIS’ refers to, among others, the hemp plant when it is used as a drug or to the drug obtained from the dried leaves and flowers of the hemp plant whereas the word ‘SPECTRUM’ refers to, inter alia, the distribution of colours produced when white light is dispersed by a prism or diffraction grating or to any range or scale, as of capabilities, emotions, or moods and it is not used in connection with medical preparations and dietary supplements, business, sale, marketing, processing, education and consulting, mainly in the field of marijuana. The word combination ‘SPECTRUM CANNABIS’ is therefore already unusual in the given context. More importantly, the applicant failed to show that a sufficiently direct and specific relationship between the sign and the goods and services in question exists to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question, or one of their characteristics. The applicant argues that, although this combination is not common, it informs immediately the consumers that goods and services concerned are in relation with health and drugs and more particularly with cannabis. Therefore, the trade mark ‘SPECTRUM CANNABIS’ evokes any range or scale of cannabis. However, the relationship between ‘any range or scale’ and the ‘hemp plant/drug’ is too unclear for the public to be able to identify, without further thought, what range or scale the ‘hemp plant/drug’ is. This combination of the said words does not convey a clear message for the consumers as to what type of connection could there be between a range or scale and a hemp plant/drug and therefore, they cannot, without further thinking, imagine a quality of the hemp or the drug just upon perceiving the EUTM. The relationship between the sign and the goods and services is not sufficiently direct and specific for the consumers to immediately imagine a specific characteristic of the goods and services in question and implies at least a further mental step.

The applicant filed evidence in support of its observations. Several extracts (exhibits 14-15) from websites show the expression ‘full spectrum’ in the description of the products. The applicant explains that the word ‘spectrum’ is frequently used in the domain of health and in the field of cannabis and more particularly in the field of medical cannabis and marijuana. It claims that the wording ‘full spectrum’ used in the field of cannabis refers to goods that contain all the cannabinoids of the plant including THC (tetrahydrocannbinol),

Exhibit 17 includes several articles explaining the difference between CBD isolate, Full spectrum and Broad spectrum. According to the said articles, CBD is an active ingredient in cannabis. CBD isolate is the purest form removing all the other compounds. Full spectrum CBD is an extract that contains all compounds found naturally occurring in the plant, including terpenes, essential oils, and other cannabinoids. Broad spectrum is a mix of the other two excluding THC (Tetrahydrocannabinol). THC is one of at least 113 cannabinoids identified in cannabis.

Firstly, some of these documents are not dated and the Cancellation Division considers that the relevant documents merely compare the concept of Full Spectrum versus Broad Spectrum but does not refer to the contested mark ‘SPECTRUM CANNABIS’ itself. The expression ‘full spectrum’ is used as a description of the products or a promotional formula. It makes reference to the products to magnify the therapeutic benefits of each individual cannabinoid, that is, that the products have a coverage which is broad, containing all the substances found in hemp but it will not be perceived as an indication to the contested mark. In the Cancellation Division’s view, the documents do not give indications that the EUTM proprietor has been using the EUTM in a descriptive manner as argued by the applicant. These documents, therefore, cannot prove that the combination of words ‘SPECTRUM CANNABIS’ was used at the time of filing of the contested mark to describe a specific range or scale of the hemp plant/drug.

The applicant also indicates that ‘SPECTRUM’ is a common word widely used and understood in the field of health. It refers to a Wikipedia extract which indicates: “Antibiotic spectrum of activity is a component of antibiotic classification. A broad-spectrum antibiotic is active against a wide range of bacteria, whereas a narrow-spectrum antibiotic is effective against specific families of bacteria. In psychiatry, the spectrum approach uses the term spectrum to describe a range of linked conditions, sometimes also extending to include singular symptoms and traits. For example, the autism spectrum describes a range of conditions classified as neurodevelopmental disorders.”

However, even if the word ‘SPECTRUM’ might be used in the field of health to express the effectiveness of the antibiotics or to refer to a range of conditions in some neuronal disorders, the descriptive character of the contested trade mark ‘SPECTRUM CANNABIS’ has to be assessed as a whole in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public. The fact that the element ‘SPECTRUM’ might be used in the health field to explain the effects of the medicines does not render the entire mark descriptive.

Furthermore, the applicant explains that the trade mark ‘SPECTRUM CANNABIS’ suggests that the designated products and services are in relation with cannabis but more specifically with the full spectrum of cannabis. It adds that the wording « full spectrum » used in the field of cannabis refers to goods that contain all the cannabinoids of the plant including THC (tetrahydrocannbinol), a substance which is prohibited in Europe.

However, the word combination ‘SPECTRUM CANNABIS’ is not sufficiently specific so as to be considered by the relevant public to provide information about all the cannabinoids of the plant including THC (tetrahydrocannbinol). In the Cancellation Division’s view, it is not plausible that the relevant consumers would interpret that the contested mark refers directly to the THC as one of the components of cannabis.

Therefore, the applicant failed to show that a sufficiently direct and specific relationship between the sign and the goods and services in question exists to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question, or one of their characteristics.

It follows from the above that the applicant has not proved that the EUTM was registered contrary to Article 7(1)(c) EUTMR.

Non-distinctiveness – Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR trade marks which are devoid of any distinctive character are not to be registered.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

The applicant considers that the combination of these two words in that grammatical structure is immediately understood by the relevant public lacking distinctive character. It does not have the capacity to distinguish goods and services and to serve as an indication of origin.

The Cancellation Division is of the opinion that it is true that the mark applied for ‘SPECTRUM CANNABIS’ may convey a subtle message that the range of proprietor’s products and services allow customers to relate them with cannabis. However, the message conveyed is non-specific. The combination of both terms together is vague and indirect and therefore, at most, merely allusive.

Furthermore, a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, insofar as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — even primarily understood — as a promotional formula has no bearing on its distinctive character (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 30).

In this regard, the Cancellation Division considers that the applicant has not provided evidence or convincing arguments which prove that the contested EUTM is devoid of distinctive character.

The applicant also argues that lack of distinctiveness of the EUTM is based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign at the time of filing cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness. Furthermore, the applicant did not submit examples of use of ‘SPECTRUM CANNABIS’ as a non-distinctive combination of words at the time of filing of the EUTM.

In view of the above, the invalidity application must be rejected also on the ground for invalidity laid down in Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR.

Contrary to public policy or to accepted principles of morality - Article 7(1)(f) EUTMR

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 not to identify and filter out signs whose use in commerce must at all costs be prevented, but 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. In other words, the Office should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilized society (06/07/2006, R 495/2005-G, SCREW YOU, § 13).

The right of traders to freely employ words and images in the signs they wish to register as trade marks must be balanced against the right of the public not to encounter disturbing, abusive, insulting and even threatening trade marks (06/07/2006, R 495/2005-G, SCREW YOU, § 14).

The application of Article 7(1)(f) EUTMR is not limited by the principle of freedom of expression (Article 10, Freedom of expression, European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign from being used — even in business (09/03/2012, T-417/10, ¡Que buenu ye! Hijoputa, EU:T:2012:120, § 26).

‘Public policy’ and ‘accepted principles of morality’ are two different concepts that often

overlap. The question whether the goods or services for which protection is sought can or cannot be legally offered in a particular Member State’s market is irrelevant for the question as to whether the sign itself falls foul of Article 7(1)(f) EUTMR (13/09/2005, T-140/02, Intertops, EU:T:2005:312, § 33). Whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for, and not by the circumstances relating to the conduct of the person applying for the trade mark (13/09/2005, T-140/02, Intertops, EU:T:2005:312, § 28).

According to the applicant, the word ‘CANNABIS’ included in the contested mark is considered contrary to public policy and to accepted principles of morality. It cannot be considered to registering a trademark which praises cannabis when the consummation, use or sale of this product is considered illegal by some countries in the European Union.

Signs that can be perceived as promoting the use of illegal drugs also fall under this provision. Taking into account, as factual evidence, that certain drugs are illegal in some Member States as well as the fact that the EU has undertaken drug policy initiatives to fight against illegal drugs, an objection should be raised. It is an objective indication that such signs would be perceived as going directly against the basic moral norms of society. The assessment made will take into account the term used in the mark applied for or the presence of other elements that could be perceived as promoting the use of illegal drugs. However, an objection will not be raised if the sign contains a reference to a drug that is for medical use, as the mark would not fall, in principle, within the prohibition of Article 7(1)(f) EUTMR.

The assessment of the contradiction of public policy and morality is based on how a reasonable consumer with average thresholds of sensitivity and tolerance would perceive the sign in relation to the goods and services for which protection is sought.

In this case, in its communication on 16/08/2017, the Office partially refused the contested application. On 24/11/2017, the examiner, after the observations submitted by the applicant for the registration (the proprietor in cancellation proceedings), waived the objection for some of the previously objected goods and services and maintained the objection for the remainder objected goods and services.

The examiner stated in its decision that the genus Cannabis is bred in different ways, where some Cannabis strains are bred to produce minimal levels of tetrahydrocannabinol (THC), the principal psychoactive constituent. These are often referred to as industrial hemp and is not intended for use as a drug, but used in many commercial products as highlighted by the proprietor. It is therefore reasonable to differentiate between goods and services aimed for recreational purposes and those aimed for everyday consumption or used in common products for medical purposes.

As confirmed by the Court of Justice in its judgment of 19/11/2009, T-234/06, Cannabis, EU:T:2009:448, § 19, the term “cannabis” has three possible meanings. First, it designates a plant, “cannabis sativa”, in respect of which the common organisation of the market is regulated within the Community and whose production is subject to very strict legislation as regards the content of abiolo (THC), active ingredient of cannabis, which is not to exceed the threshold of 0.2 %. Secondly, the term “cannabis” refers to a narcotic substance which is banned in a great number of Member States. Third, it designates a substance for which the possible therapeutic use is under discussion.

In this case, looking into the contested mark in relation to the concerned goods and services, those are related to the legal and common use of Cannabis where the intention of use is not psychoactive but medical. Trade marks that do not commercialize/promote the use of cannabis as a drug for recreational purposes are not contrary to Article 7(1)(f) EUTM.

The Cancellation Division considers that as regards goods in Class 5, they consist of dietary supplements, medicines and pharmaceutical preparations for the treatment of several diseases, some of them are marijuana preparations or cannabis oils. In this case, the sign containing the word ‘CANNABIS’ refers to the use of this substance for medical purposes and not for recreational purposes.

As regards the contested services in Class 35, they consist of a variety of services from business management, marketing and information services to the sale of a variety of products in general or those services in relation to the health care industry or marijuana. The trade mark containing the term ‘CANNABIS’ refers to a medicinal use of the drug.

The same reasoning applies to the services in Classes 40 (processing and production of marijuana), 41 (medical educational services in the field of marijuana), 44 (medical well-being services, medical dispensary services, counselling, information and recommendations; all in the field of medical marijuana as well as the rental of hothouse or greenhouse facilities) and 45 (advisory services for the licencing of medical marijuana), the contested trade mark containing the word ‘CANNABIS’ refers to a medicinal use of the drug even if the medical purpose of some of the services is not explicitly indicated.

Therefore, the contested mark ‘SPECTRUM CANNABIS’, in relation to the contested goods and services, will be taken as a whole by the reference public, able to understand the meaning of the word ‘CANNABIS’, as a reference to the substance known with the same word, that is, as a component of the products in question or the subject matter of the services, for medical purposes where the intention of use are not psychoactive.

Therefore, the contested mark is not contrary to Article 7(1)(f) EUTMR.

In view of the above, the invalidity application must be rejected also on the ground for invalidity laid down in Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR.

As regards the applicant’s argument that a number of similar registrations have been rejected by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

In support of its observations, the applicant refers to the following decisions:

• EUTM No 13 865 134 ‘CANNABIS LAB’ filed for goods and services in Classes 5, 42 and 44.

• EUTM No 13 186 804 ‘CANNABIS BEAUTY’ filed for goods in Classes 3 and 5.

• EUTM No 1 331 083 ‘CANNABIS CRYSTAL’ filed for goods in Classes 5 and 25.

• EUTM No 17 923 362 ‘CANNABIS ZERO’ filed for goods in Classes 3, 30, 31, 32 and 34.

• EUTM No 1 220 295 ‘CANNAFEST’ filed for services in Classes 35 and 41.

• EUTM No 17 443 987 ‘PURACANNABIS’ filed for goods in Classes 22, 29 and 31.

• EUTM No 8 281 677 ‘CANNABIS WIRED VIP’ filed for goods in Class 34.

• EUTM No 16 176 968 ‘CANNABIS STORE AMSTERDAM’ filed for goods and services in Classes 30, 32 and 43.

• EUTM No 15 206 717 ‘PAINSPECTRUM’ filed for goods and services in Classes 9, 16, 41, 42 and 44.

• EUTM No 4 134 896 ‘SPECTRUM SELECTIVE RECEPTOR TYROSINE KINASE INHIBITOR’ filed for goods and services in Classes 5 and 42.

• EUTM No 4 134 888 ‘SPECTRUM SELECTIVE KINASE INHIBITOR’ filed for goods and services in Classes 5 and 42.

• EUTM No 2 920 742 ‘FULL SPECTRUM’ filed for goods in Class 9.

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not comparable to the present proceedings as it was considered that in the applied signs including the element ‘CANNABIS’ in relation to their respective goods and services, the marks informed immediately the consumers about the characteristics or the intended purpose of the goods and services; or that the products contain cannabis; or that they refer to a meeting or an event regarding the drug obtained; or that they are contrary to the public policy because, in relation to the relevant goods, the signs are for recreational purposes. However, none of them applies to the case at hand.

As regards the Office’s decisions in relation to signs including the element ‘SPECTRUM’, the Office considered that, in relation to the concerned goods and services, the marks convey obvious and direct information regarding the subject matter and the main purpose of the goods and services in question or they are merely use as an promotional formula with no distinctive character, which is not the case here.

For the sake of completeness, it has to be noted that the same arguments apply to the rest of the public in the European Union which use the same words in their respective languages.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.