In which cases “CANNABIS” cannot be a European trademark?

pexels-photo-2731667.jpegThe General Court of the EU has ruled in case T‑683/18 Santa Conte v EUIPO. It concerns an attempt for registration of an European trademark for the following combined sign:

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The classes of goods and services were as follow:

–  Class 30: ‘Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Ice, ice creams, frozen yoghurts and sorbets; Savoury pastries’;

–  Class 32: ‘Soft drinks; Beer and brewery products; Preparations for making beverages’;

–  Class 43: ‘Services for providing food and drink’.

The EUIPO refused to register this mark based on absolute grounds – a sign contrary to the public interests, Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

The decision was appealed.

The General Court upheld the EUIPO position with the following arguments:

the word ‘cannabis’ has three possible meanings. In the first place, it refers to a textile plant, for which the common organisation of the market is regulated within the European Union, and the production of which is subject to very strict legislation as regards the THC content, which may not exceed the threshold of 0.2%. In the second place, the word ‘cannabis’ refers to a narcotic substance which is prohibited in a large number of Member States, to date in the majority of them. In the third place, it refers to a substance the possible therapeutic use of which is under discussion.

The Board of Appeal was fully entitled to consider that it was necessary, in particular, to define how the relevant public would perceive all the elements forming the sign which is the subject of the trade mark application. It considered that the combined presence, in the sign at issue, of the stylised representation of the cannabis leaf, the media symbol for marijuana, and the word ‘amsterdam’, referring to the fact that the city of Amsterdam has many points of sale for the narcotic derived from cannabis, due to the sale of cannabis being tolerated under certain conditions in the Netherlands, made it very likely that the consumer, in the circumstances of the present case, would interpret the word ‘cannabis’ as referring to the narcotic substance which is illegal in ‘many countries of the European Union’.

That interpretation must be upheld, particularly in view of the inclusion, in the sign which is the subject of the trademark application, of the word ‘store’, which normally means ‘shop’, with the result that that sign, the dominant element of which is the word ‘cannabis’, will be perceived by the relevant English-speaking public as meaning ‘cannabis shop in Amsterdam’ and by the relevant non-English-speaking public as ‘cannabis in Amsterdam’, which, in both cases, coupled with the image of the cannabis leaves, the media symbol for marijuana, is a clear and unequivocal reference to the narcotic substance which is sold there. That public could, therefore, expect the goods and services sold by the applicant to correspond to those which would be sold in such a shop.

The applicant cannot rebut that conclusion by arguing that the Board of Appeal failed to examine whether, in addition, the sign at issue encourages, trivialises or conveys approval of the use of an illegal narcotic substance. The fact that that sign will be perceived by the relevant public as an indication that the food and drink items referred to by the applicant in the trade mark application, and the related services, contain narcotic substances which are illegal in many Member States is sufficient to conclude that it is contrary to public policy for the purposes of Article 7(1)(f) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, as the Board of Appeal rightly stated, in view of the fundamental interest highlighted in paragraphs 74 and 75 above. In any event, since one of the functions of a trade mark consists of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase, that sign, in so far as it will be perceived as described above, encourages, implicitly but necessarily, the purchase of such goods and services or, at the very least, trivialises their consumption.