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Doubts are evaporating: a trademark referring to Marijuana cannot be registered as an EU trademark...for the time being

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The General Court of the European Union (“the Court”) has just confirmed in its judgment of 12 December 2019, that Marijuana leaves accompanied by the words « Cannabis store Amsterdam » cannot be registered as a trademark because of the potential breach to the EU public policy.

Although the legalisation of the use of cannabis for personal use tends to spread in recent years in various Member States as well as the legalisation of the sale of certain products containing cannabis for therapeutic or even recreational purposes, European case law on trademark registration remains more conservative.

On 19 December 2016, Ms Santa Conte registered a figurative mark consisting of the stylized depiction of green cannabis leaves on a black background with the verbal elements "Cannabis store Amsterdam" for food products, beverages and food services. Both the examiner and the Board of Appeal of the EUIPO reject this request on the basis of Article 7(1)(f) of Regulation 2017/1001, considering that the sign is contrary to public policy.

Ms Santa Conte then lodged an appeal before the Court. According to her, the EUIPO misunderstood the meaning of the depicted leaves, and lacked precision and impartiality in its reasoning. Marijuana is not a plant but a psychoactive substance obtained from female cannabis flowers rather than from cannabis leaves. In response to that argument, the Court observes that the decisive criterion for assessing whether a sign is contrary to public policy is the concrete and current perception of the trademark by the relevant public, irrespective of the exhaustiveness of the information available to the consumer. In the present case, however, the particular shape of these leaves is so often used as a media symbol of marijuana that there is no doubt that the consumer perceives it in the latter sense.

Moreover, as regards the applicant's alleged use of the terms "cannabis", "Amsterdam" and "store" instead of elements more appropriate to highlight the characteristics of food and beverages without tetrahydrocannabinol (THC) which are nevertheless covered by that mark, the Court points out that a sign must be refused registration if, in at least one of the potential meanings, it characterises the existence of an absolute ground for refusal. In addition, the Court concludes, in this case that, not only the leaves are one of the potential meanings of cannabis as a narcotic product, but the combination of the verbal and figurative elements confirms this perception.

On the other hand, as regards the public to be taken into account in assessing this ground for refusal, the Court points out that it is a reasonable person with average sensitivity and tolerance thresholds and not only the public to whom the goods and services for which registration is sought are directly addressed. The signs referred to for this reason could, in this case, also shock other persons who, without being concerned by the said goods and services, would be brought into the presence of this sign in an incidental manner in their daily life.

In this respect, the Court also notes that, when analysing such criterion, it is necessary to take into consideration both the circumstances common to all Member States and of the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States. It is clear for the Court that the general public does not necessarily have accurate scientific or
technical knowledge regarding narcotics in general, and in particular the narcotic derived from cannabis, even if that situation is likely to vary according to the Member States within which that public is situated and, in particular, according to the debates which may have led to the adoption of legislation or rules authorising or tolerating the therapeutic or recreational use of products with a sufficient THC content to produce psychotropic effects.. It is a question of taking into account the perception of the average consumer, who is reasonably well informed and reasonably observant and careful.

In the present case, the Court further notes that by translating the verbal elements of that trademark, the consumer could in particular be misled and mistakenly believe that it is a shop selling cannabis in the sense of a psychotropic substance.

To the applicant's argument that the EUIPO did not take into account the evolution of the cultural and social conception of cannabis and its use for lawful purposes in the Union, so that it did not correctly assess the perception of the relevant public, the Court replies that, for now, there is no unanimously accepted or even predominant trend in the EU concerning the lawfulness of the use or consumption of cannabis products with a THC content exceeding 0.2%.

It should be added that it is also the legislative uncertainty in some Member States and the differences in legislation between them that still hinder the massive marketing of products with a THC content below 0.2% in the EU.

The fact that the sign in question may be perceived by the relevant public as an indication that the goods and services targeted by the applicant contain illegal narcotic substances in several Member States is sufficient to conclude that it is contrary to public policy. Since one of the functions of a trademark is to identify the commercial origin of the product or service, the said sign perceived in the manner described above can only trivialize the purchase or at least the consumption of such products and services.

The Court seems to want to teach us that allowing the sale of cannabis products and personal consumption of cannabis is one thing, encouraging their massive promotion without any nuance and at the same time trivialising their consumption by all EU citizens even though it is prohibited in some Member States is another.