Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2018

HORTIS LEGAL

Postbus 1072

2280 CB Rijswijk

PAÍSES BAJOS

Application No:	017902301
Your reference:	513677
Trade mark:	why not? by Ivanart
Mark type:	Figurative mark
Applicant:	WN Whynot Sagl Via Cantonale 54 CH-6837 Bruzella SUIZA

With the notification of 18/06/2018 (attached) the applicant was informed, that the sign applied for cannot be registered under Article 7(1)(f) and 7(2) EUTMR.

With the above notice the applicant was given opportunity to submit observations in reply. On 14/08/2018 the applicant submitted its observations which can be summarized as follows:

1. The sign applied for is not supportive of cannabis.

2. The picture of the plant could also refer to Sansevieria cylindrica, which has smooth leaves instead of the serrated leaves of a cannabis flower.

3. The verbal elements would not refer to cannabis or any use of it. The phrase “Why not use drugs” either as affirmation or question would be speculative.

4. In any event, a cannabis flower would not equal drugs.

5. lf the examiner still holds that the sign, by the use of the flowers, support the use of cannabis, it certainly does not support the use of cannabis in an illegal way. There is not any hint or link that point towards such direction. lt has been supported that it is, however, completely legal to cultivate and supply cannabis plants for hemp fibre in the European Union if they have low levels of THC. The image of a cannabis plant in itself would not be contrary to public policy or principles of morality, neither does it shock or offend a reasonable person with average levels of sensitivity and tolerance. Such a person would be aware of the fact that the cannabis flower refers to the cannabis plant that can be used for a variety of purposes, not exclusively illegal purposes.

6. The goods/services at issue should be taken into account.

7. Precedents should be taken into account.

1. Public order – 7(1)(f) EUTMR

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. Having given the above arguments careful consideration the Office maintains the grounds for refusal in respect of the contested goods. The reasons are explained hereunder.

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.

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 sign applied for is the following figurative one:

It depicts twice a plant, which is easily recognizable as cannabis plant. In this context the general public is relevant, not plant experts.

The use of cannabis is forbidden in several Member States of the EU, such as the United Kingdom 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 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.

In as far as the applicant argues that the sign applied for is not supportive of cannabis, this argument has to be refuted. Average consumers will not over-analyze the sign at hand and will not use any lexical plant knowledge. A direct relation to the cannabis plant is apparent.

In as far the applicant argues, the picture of the plant could also refer to a plant, called Sansevieria cylindrica, which has smooth leaves instead of the serrated leaves of a cannabis flower.

Yes, it could (analyzing the sign in a very abstract way). However taking into account the reality, many consumers would just see a cannabis plant. And this is what matters. Thus also this argument cannot lead to a better result of the case.

Cannabis leaves are not always depicted with serrated leaves. See e.g. application No 017443987:

Or e.g. here:

www.cannabisfeminist.com

Further the applicant argues that the verbal elements would not refer to cannabis or any use of it. The phrase “Why not sue drugs” either as affirmation or question would be speculative.

The sign has to be seen as a whole. In the opinion of the examiner it cannot lead to a better result that the verbal element poses a question. The consumer sees twice stylized cannabis leaves. In so far one there is no speculation.

In as fart the applicant contends that a cannabis flower would not equal drugs, this argument has to be rejected, too. The sign has to be seen as a whole. The supportive message for cannabis is inherent to this sign. Who supports cannabis, supports drugs.

Fifth argument: lf the examiner still holds that the sign, by the use of the flowers, support the use of cannabis, it certainly does not support the use of cannabis in an illegal way. There is not any hint or link that point towards such direction. lt has been supported that it is, however, completely legal to cultivate and supply cannabis plants for hemp fibre in the European Union if they have low levels of THC. The image of a cannabis plant in itself would not be contrary to public policy or principles of morality, neither does it shock or offend a reasonable person with average levels of sensitivity and tolerance. Such a person would be aware of the fact that the cannabis flower refers to the cannabis plant that can be used for a variety of purposes, not exclusively illegal purposes.

What is legal in one Member State, might be or is illegal in other Member States of the EU (see above). The sign does not give any explanation that “hemp” and not cannabis is meant.

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 therefore 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 goods and services still at issue are:

16 Printed matter; Comic strips; Cartoon strips; Cartoon prints; Comic books; Comic magazines; Prints; Printed matter for instructional purposes; Educational equipment; Stationery and educational supplies; Educational books; Books; Magazine; Ball pens; Information booklets; Printed brochures; photographs; Posters; Postcards; Picture postcards; Printed publications; Printed periodical publications; Printed stories in illustrated form; Comics; Art prints; Art pictures; Printed periodicals in the field of figurative arts; Caricatures; Graphic prints and representations; Graphic drawings.

25 Clothing; Tops; T-shirts; Pants; Footwear; Shoes; Headgear; Hats; Hoodies; Coats.

41 Education; providing of training; entertainment; education information; magazine publishing; book publishing; Publishing of magazines in electronic form on the Internet; Publication of education texts; Providing on-line non-downloadable comics; Creating animated cartoons; Production of animation; Multimedia publishing of printed matter.

As regards the goods and services still at issue, the sign just is a supportive message for cannabis on all the goods.

In relation to the services, this applies to. A significant part of parents will be shocked, if cannabis consume should be supported in education in the way as it is done with the present sign.

As regards precedents invoked, 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 legality of those decisions must be assessed solely on the basis of the EUTMR and not on the basis of the Office’s previous decision-making practice (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47 and 28/01/2004, T-146/02 - T-153/02, Standbeutel, EU:T:2004:27, § 48). The precedents mentioned by the applicant cannot, therefore, alter the finding that the trade mark under consideration in the present proceedings is devoid of any distinctive character.

Last, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227,§ 59). The mere fact that, in other cases relating to other trade marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature.

In the present case, the sign is a supportive message for cannabis, which is evident from the figurative parts of the sign which represent a plant. The case cannot be compared with mere word marks like e.g. “WEED TIME”.

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 017902301 is hereby rejected or all the goods and services 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.

Wolfgang SCHRAMEK