Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 16/10/2019

BARZANO’ & ZANARDO MILANO S.P.A.

Via Borgonuovo, 10

20121 Milano

ITALIA

Application No:	018093321
Your reference:	za/DD/6271/ctm
Trade mark:	BUDMASTER
Mark type:	Word mark
Applicant:	Avi Tzur 3 Hagana Street Ramat Hasharon 4720349 ISRAEL

The Office raised an objection on 25/07/2019 pursuant to Article 7(1)(f) and Article 7(2) EUTMR because it found that the trade mark applied for is contrary to public policy and accepted principles of morality, for the reasons set out in the attached letter.

The applicant submitted his observations on 18/09/2019, which may be summarised as follows:

• According to the Office’s own Guidelines, the concept of morality in Article 7(1)(f) EUTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of Article 7(1)(f) EUTMR, a trade mark must be perceived by the relevant public, or at least a significant part of it, as going directly against the basic moral norms of society.

• The EU common agricultural policy subsidises growing certain varieties of the cannabis plant for industrial uses, provided their THC content does not exceed 0.2 %.

• The European cannabis market has experienced greater growth than in the previous six years. Governments and their legislative arms are already becoming increasingly pro cannabis. Europe has a thriving cannabis market. There are numerous coffee shops in the Netherlands and Spain; moreover, many EU countries have introduced or reviewed legislation or announced future legislation to advance the legal cannabis agenda.

• Surely there are differences between medical cannabis and recreational cannabis; however, 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).

• The EUIPO has recently accepted applications for marks including words like cannabis, marijuana, weed or other cannabis-related or derived words or symbols for a wide variety of cannabis related goods, including medical cannabis, skin care preparations containing cannabis plant derivatives, food and beverage products containing cannabis, hemp seeds, pipes and vaporisers for administering medical cannabis, and various educational, product development, medical, consulting and advisory services relating to cannabis.

• Similarly, it is incomprehensible how the registration of marks like ‘SPEKTRUM CANNABIS’ and ‘SPECTRUM CANNABIS’ granted for — among others — brownies, cupcakes, cookies and muffins, pancake mixes, chocolate, chocolates, candies and biscuits, ensures that children and young people do not encounter an offensive word in shops that are accessible to the general public, while the trade mark applied for, ‘BUDMASTER’ — for goods that, by their nature, are not sold and stocked in normal shops — offends children and young people.

• According to the Collins Dictionary, the term ‘BUD’ can convey many meanings. Marijuana is only a slang meaning. Therefore, at the most, it has a low level of ‘suggestiveness’ in respect of cannabis.

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 his comments.

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

The goods for which protection is sought are the following:

Class 34: Cigarette rolling papers; cigarette tubes; cigarettes, cigars, cigarillos and other ready-for-use smoking articles; electronic smoking pipes; smoking sets for electronic cigarettes.

The goods in question target the public at large. The degree of attention is average.

The sign applied for is the word mark ‘BUDMASTER’.

Article 7(1)(f) EUTMR – Trade marks contrary to the public policy or acceptable principles of morality

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. Article 7(1)(f) EUTMR mirrors Article 6quinquies(B)(iii) of the Paris Convention, which provides for the refusal of trade mark applications and for the invalidation of registrations where trade marks are ‘contrary to morality or public order’.

The wording of Article 7(1)(f) EUTMR is very broad and allows a great deal of room for interpretation. A judicious application of this provision necessarily entails balancing the right of traders to freely employ words and images in the signs they wish to register as trade marks 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 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 mark applied for contains the word ‘BUD’, which will be understood by the English-speaking part of the public as, inter alia, a slang word for marijuana. This meaning has not been disputed by the applicant. It is irrelevant whether the word ‘BUD’ may also have other meanings as claimed by the applicant. In analogy to Article 7(1)(c) EUTMR, for a trade mark to be refused registration,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The above is applicable to Article 7(1)(f) EUTMR, where it is sufficient that one of the possible meanings of the word concerned is contrary to public policy or morality.

It is also legitimate to base the assessment on only a part of the relevant public, namely that part for which the sign or an element thereof is meaningful, as for the English-speaking part of the public in the present case. This possibility is provided by Article 7(2) EUTMR and by case-law, according to which the assessment of whether a sign is contrary to public policy or to accepted principles of morality must be carried out with reference to the perception of that sign, when being used as a trade mark, by the relevant public within the European Union or part of the Union. That part may, in some circumstances, be comprised of a single Member State (20/09/2011, T‑232/10, Coat of arms of the Soviet Union, EU:T:2011:498, § 50).

The applicant highlights the liberalisation of the market regarding cannabis-containing products, especially in the fields of medicine and cosmetics and in the food industry. As already underlined by the Office in its previous notice, illegality is not a necessary condition for giving rise to a conflict with accepted principles of morality. The examination of Article 7(1)(f) EUTMR should consider the context in which the mark is likely to be encountered, assuming normal use of the mark in connection with the goods and services covered by the application (06/07/2006, R 495/2005‑G, SCREW YOU, § 21, emphasis added). Taking account of the goods and services for which registration of the mark is sought is normally necessary, since the relevant public may be different for different goods and services and, therefore, may have different thresholds with regard to what is clearly unacceptably offensive.

It has been established by the Office that in connection with cigarette rolling papers; cigarette tubes; cigarettes, cigars, cigarillos and other ready-for-use smoking articles; electronic smoking pipes; smoking sets for electronic cigarettes a very significant proportion of the relevant public, whose level of sensitivity and tolerance is normal, will perceive the message and connotations conveyed by the word ‘BUD’ and will feel offended or outraged at being customarily exposed to articles or advertisements therefor that contain the expression ‘BUDMASTER’. It is, therefore, irrelevant whether there is a tendency of a liberalisation of the market in general and whether consumers are used to encountering cannabis derivatives in medicines, foodstuffs and cosmetics, because such products are not the subject of the current assessment. It is also irrelevant that the EU common agricultural policy subsidises growing certain varieties of the cannabis plant for industrial uses, provided their THC content does not exceed 0.2 %, because such a quantity of cannabis is not guaranteed by the specifications of the goods in question.

Regarding the distribution channels of the goods in question, the Office already noted in its previous notice that it is not unusual that some of those goods can be bought from the internet, being advertised at locations and times and via media that are accessible to all, including children and adolescents.

It is also irrelevant whether the Office has previously accepted the registration of trade marks containing words such as cannabis, marijuana and weed, because each case has to be examined separately taking account of the circumstances and facts of the particular case. Moreover, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(f) and Article 7(2) EUTMR, the application for European Union trade mark No 18 093 321 is hereby rejected for all the goods claimed.

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.

Ivo TSENKOV