Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/11/2017

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	017068115
Your reference:	T62301EU01
Trade mark:	SPECTRUM CANNABIS
Mark type:	Word mark
Applicant:	Mettrum Ltd. 1 Hershey Drive Smiths Falls Ontario K7A 0A8 CANADÁ

The Office raised an objection on 16/08/2017 pursuant to Article 7(1)(f) and Article 7(2) EUTMR because the element ‘cannabis’ is considered to contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society, for the reasons set out in the attached letter.

The applicant submitted its observations on 09/10/2017, which may be summarised as follows.

1. The mark does not fall into the category of marks that are contrary to public policy or accepted principles of morality. Cannabis is used legally in many common products.

2. Several Member States have registered trade marks consisting of or containing the name of a psychoactive drug.

3. The EUIPO has previously registered trade marks consisting of or containing the name of a psychoactive drug.

4. Should EUIPO maintain the objection, the applicant wishes time to limit the list of goods for which registration is sought.

Pursuant to Article 94 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 waive the objection for the following goods and services:

Class 5 Hemp-based dietary supplements for general health and well-being, hemp-based protein powder, protein and fibre powder, meal replacement bars; Hemp based beverages for health purposes; Cannabis based beverages for health purposes.

Class 35 Sale of food products, beverages, personal care preparations, skin care preparations.

The objection is maintained for the remaining goods and services.

Contrary to public policy or accepted principles of morality

Pursuant to Article 7(1)(f) EUTMR, ‘trade marks which are contrary to public policy or to accepted principles of morality’ shall not be registered.

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 civilised 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).

The applicant argues that the mark neither is contrary to public policy or to the accepted principles of morality. The applicant continues; that all Member States allows marketing and sale of medical cannabis in different setups and furthermore, that Cannabis is used for many legal and common products.

As highlighted by the applicant, 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’, § 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’, § 28).

The genus Cannabis is bred in different ways, where some Cannabis strains are bred to produce minimal levels of tetrahydrocannabinol (THC), the principal psychoactive constituent¹. These are often referred to as industrial hemp and is not intended for use as a drug, but used in many commercial products² as highlighted by the applicant. It is therefore reasonable to differentiate between goods aimed for recreational purposes and those aimed for everyday consumption or used in common products.

Therefore, after having taken the applicant’s arguments into further consideration and having looked into the Office’s recent practice on registered trade marks, that consists of or contains elements with reference to psychoactive substances, the Office has decided to partly waive the objections for the goods and services relating to the legal and common use of Cannabis, among others for use in dietary supplements and skin care preparations, where the intention of use not psychoactive.

The services for which the objection is maintained are those which the Office considers contrary to the accepted principles of morality. These are the services for which the mark would be seen as a reference to drugs of which consumption for recreational purposes is harmful to the health and lives of the people (and prohibited in part of the EU).

When encountering the mark in relation to, for example, the sale of marijuana or articles relating to its consumption, as well as the cultivation hereof, an important part of the relevant consumers would perceive the mark as a denial of the negative effect of the drugs and indirectly support the idea that breeding and consumption of psychoactive substances are something normal and usual. The relevant consumers would therefore perceive it as contrary to the accepted principles of morality, where such substances, for use for other than medical purposes, are considered harmful.

The Office therefore maintains that the remaining services are contrary to the principle of public morality.

Similar marks previously accepted by national Offices

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Similar marks previously accepted by the EUIPO

As regards the applicant’s argument that a number of similar registrations have been accepted 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).

The Office has looked into the previous cases consisting of or containing names of psychoactive substances and applied the same principles to the applicant’s application. See for example EUTM 15186059 ‘WORLD of SEEDS cannabis seeds around the world’ rejected for among others tobacco products, herbs for smoking and smokers’ articles in Class 34 and sale of herbs for smoking and smokers’ articles in Class 35.

Request to restrict the list of goods

Should the Office maintain the objection, the applicant has requested time to limit the list of goods and services for which registration is sought. However, the Office cannot accept a conditional limitation, therefore the applicant cannot make amendments to the list of rejected goods and services, but are welcome to make amendments to the list of goods and services for which the mark will be accepted.

For the abovementioned reasons, and pursuant to Article 7(1)(f) and Article 7(2) EUTMR, the application for European Union trade mark No 17 068 115 is hereby rejected for the following goods and services:

Class 35 Sale of cannabis and marijuana and derivatives thereof; Sale of marijuana, hemp and cannabis products and accessories and smoking accessories; Sale of smoking products and accessories, namely, smoking pipes, electronic smoking pipes, hand pipes, water pipes, hookahs, oral vaporizers, herb grinders, grinder cards, herb weigh scales, cigarette rolling papers.

Class 44 Cultivation, breeding, processing and production of marijuana, cannabis; Consulting services in the fields of horticulture, marijuana, cannabis and cannabis oil; Horticulture; Plant seeding; Gardening; Plant nurseries.

The application may proceed for the remaining goods and services, namely:

Class 5 Medical marijuana and cannabis and derivatives thereof; hemp-based dietary supplements for general health and well-being, hemp-based protein powder, protein and fibre powder, 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; products for administering medical marijuana and cannabis namely, buccal sprays, gel caps, and transdermal patches; 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 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 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, housewares, stationery, 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 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; Sale of nebulizers, atomizers, buccal sprays, gel caps, cannabis infused lotions, balms, oils and creams, and transdermal patches for administering drugs and vaporizers for medical purposes and production; Sale of lighters, matches, ashtrays, cigarette rolling machines, cigarette holders.

Class 44 Medical marijuana and cannabis dispensary services; Operation of a wellness centre for medical marijuana patients providing physician referral services; Medical counselling services and educational services in the field of marijuana, cannabis and cannabis oils; Medical education and information services in the field of marijuana and cannabis; Providing medical information; Consulting and advisory services in the field of medical marijuana, marijuana and cannabis licensing; Consulting and advisory services in the field of medical marijuana and cannabis; Cultivation, breeding, processing and production of medical marijuana, Consulting services in the fields of 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 and research related to cannabis and marijuana; Rental of hothouse and greenhouse facilities for horticulture.

According to Article 67 EUTMR, you have 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.

Anja Pernille LIGUNA