What advice would you give your clients about brand protection in your jurisdiction? Is it easy to trademark a cannabis brand?

Margret Knitter LL.M.Partner, SKW Schwarz Rechtsanwälte

I’ve been handling cannabis trademarks since 2017, when medicinal cannabis was legalised in Germany. In the beginning those marks were only accepted for Nice Class 5, meaning only cannabis for medicinal use was permitted. But that has changed. Both the European and the German IP office now accept cannabis marks for all sorts of cannabis and CBD products in various classes, which are not only for medical use.

However, in February I received a preliminary view of the German Federal Patent Court where they did not accept CBD
products outside Class 5 for the mark applied for. They argued that in Germany only medicinal cannabis is legal and thus non-medical CBD can never be marketable.

This view is odd because the European Union Court of Justice (ECJ) only recently ruled that CBD products were no longer considered narcotics and should benefit from the free movement of goods between EU member states to the same extent as other legal goods.

Unfortunately, I couldn’t fight this preliminary view of the court because the client decided not to pursue the matter.

But we still see some rejections based on absolute grounds.

Here’s a good example of what’s being rejected:

Cannabis Store Amsterdam

The European General Court held that this device mark, which showed cannabis leaves together with the wording “Cannabis Store Amsterdam”, referred to the consumption of cannabis. This would be contrary to public policy or to accepted principles of morality and was not eligible for registration as a trademark. While cannabis consumption is generally legal in the Netherlands, the violation of the public order in other EU countries was sufficient for the rejection of the mark.

Despite the greater tolerance towards the consumption of marijuana within the EU, the decision making remains rather conservative when it comes to the assessment of the validity of the so called “cannabis marks”. From what I see, the registration as EU trademarks of signs comprising the words ‘marijuana’, ‘cannabis’, ‘hemp’, ‘grass’, ‘pot’, ‘weed’, ‘hash’ remains problematic.