The General Court of the European Union has recently made it clear that, notwithstanding the drive of some EU member states to legalise cannabis for therapeutic and even recreational purposes, it is still reluctant to invariably consent to the registration of a sign referring to cannabis as an EU trademark. This is due to public policy considerations which come into play and on which ground an application for the registration of a sign as an EU mark may be refused.
EU law caters for the possibility of any individual or company to register a trademark as an EU trademark via an application to the European Union Intellectual Property Office (EUIPO). Such registration is then valid throughout the EU. A trademark may consist of any sign, including words, designs, letters, numerals and the shape of goods or of their packaging.
Such sign must, however, be capable of distinguishing the goods or services of one business from those of another and being represented on the register of trademarks in such a way that the public and the authorities know exactly the subject matter that is being protected.
One of the grounds on which the EUIPO may refuse to register a trademark is the fact that the mark for which registration is being sought is contrary to public policy or to accepted principles of morality.
The facts of this case were briefly as follows. An application was filed with the EUIPO for the registration of a figurative sign incorporating the cannabis leaf and the words ‘Cannabis – Store Amsterdam’, as an EU trademark, in respect of food and drink items and catering services. The EUIPO rejected the application on the ground that the mark was contrary to public policy. The applicant filed an action before the General Court seeking the annulment of the EUIPO’s decision.
The court upheld the decision of the EUIPO and interpreted the mark applied for as follows: the figurative depiction of a cannabis leaf represents the media symbol for marijuana while the word ‘Amsterdam’ was interpreted as depicting the fact that the city of Amsterdam has points of sale for such a narcotic, since the sale of cannabis is permitted in the Netherlands.
The Court observed that the inclusion of the word ‘store’ implied that the public could expect the goods and services sold under the mark to correspond to those which would be available in a shop selling narcotic substances. The court conceded that hemp is not regarded as a narcotic substance below a certain THC threshold. Nonetheless, it concluded that, the combination of the different elements of the mark in question, could draw the attention of consumers who do not necessarily have the requisite scientific or technical knowledge to make the distinction.
The court then went on to make its observations on the concept of ‘public policy’. It noted that many member states are engaged in discussions regarding the legalisation of cannabis for therapeutic and even recreational purposes.
As the law currently stands, the consumption and use of cannabis above a certain threshold remain illegal in most of these states. Thus, the endeavour by most member states to contain the spread of the narcotic substance derived from cannabis ought to be considered as meeting the public health objective of combating the harmful effects of such substance. The rules applicable to the consumption and use of the substance are, therefore, a matter of ‘public policy’.
The court highlighted the fact that the Treaty on the Functioning of the European Union (TFEU) provides that the EU is to complement member states’ action in reducing drugs-related health damage. Illicit drug trafficking is, in fact, one of the areas of particularly serious crime with a cross-border dimension, in which the EU legislature may intervene.
In view of this, the court affirmed that the fact that the sign at issue will be perceived by the relevant public as an indication that the items covered by the trade mark application contain narcotic substances which are illegal in many member states, is sufficient to conclude that the mark is contrary to public policy.
One of the functions of a trademark is that of identifying the commercial origin of the goods or services, thus enabling the consumer to make his or her choices.
Basing itself on the interpretation of the sign given by the court itself above, the latter concluded that the mark in question, at the very least, encourages the purchase of such goods and services or, at the very least, trivialises their consumption.
The consideration of what is contrary to public policy or otherwise is open to interpretation and indeed leaves room for much uncertainty. As this judgment goes to show, various factors relevant to the circumstances under examination are taken into consideration by the EU judicature in reaching its conclusions.
Mariosa Vella Cardona is a freelance legal consultant specialising in European law as well as competition law, consumer law, data protection law and intellectual property law. She is also a visiting examiner at the University of Malta.