Weeding out challenges

Registration of trade marks for cannabis goods in the UK

We are seeing gradual changes in some countries to the laws around cannabis use, with Germany the latest to legalise personal use and cultivation in small quantities. Although in the UK it remains illegal to grow, sell or possess cannabis (other than for medical purposes), the UK IPO has for many years accepted registrations for cannabis and goods containing cannabis, including food and drink, and for smoking purposes. 

The IPO's stance is that, although you can't legally grow, sell or possess cannabis in the UK, it isn't against the law to register a trade mark for cannabis itself or goods that contain it.

However, there are a few points that registrants should note. 

First is the issue of non-use. In the UK, if a mark isn't used during the five -year period after registration, the registration can be cancelled. If the UK doesn't legalise cannabis use in the next five years, any applications filed now would be cancellable on non-use grounds. Existing registrations over five years old will already be vulnerable.

In anticipation of a change to cannabis laws, one might consider filing for a broader range of goods and using the mark on other products to allow the brand to gain traction amongst consumers meanwhile. Perhaps on tobacco or electronic cigarettes, and on accessories and merchandise like t-shirts and hats.

The UK IPO will accept such applications, but where tobacco goods are designated alongside non-tobacco goods it will also draw attention to The Tobacco Advertising and Promotion (Brandsharing) Regulations 2004. These Regulations govern the marketing and advertising of tobacco and tobacco-related products, and are intended to prevent 'indirect' promotion via association with non-tobacco products.

For example, advertising tobacco goods on clothing or hats, or on vapes that don't contain tobacco, will fall foul of the Regulations. Sponsorship of sporting events (such as motor racing) by tobacco companies and the advertising of their brands on clothing and vehicles, etc. was famously prohibited after the 2004 change in law.

And whilst cannabis goods aren't all used or associated with tobacco, filing for other smoking goods, including tobacco, has been a popular strategy to get some protection in place that brands could validate with use. Actually, specifying cannabis plants (Class 31) foodstuffs/drinks containing cannabis (Classes 30, 32 etc) and cannabis for smoking (Class 34) in UK applications could be a more appropriate strategy for the cannabis brands hopeful of entering the UK market should it be legalised.

Despite allowing registrations designating cannabis goods, the UK IPO will refuse applications for trade marks that it deems contrary to public policy, and brands must not reference or promote illegal drugs in any trade mark. Marks will probably be refused if they contain slang words for cannabis like ‘weed’ or ‘ganja’, or images that suggest recreational use.

Attitudes towards the sale and consumption of cannabis around the world are changing slowly and cannabis brands will be looking to protect their IP early. If the UK follows Germany's example it may not be long before cannabis companies can put their products on the market and legitimately use their trade marks for non-medical cannabis in this country. Meanwhile, brands can secure their 'flag in the sand' here in the UK, as long as they're aware of the limitations for the time being.