A trade mark that evokes marijuana is against public policy and cannot be registered at the EUIPO
The Court of the European Union (CJEU), in case T-683/19 (European Union Court, Seventh Section, judgment of 12 December 2019) confirmed the decision by the European Union Intellectual Property Office (EUIPO): a trade mark for a sign that makes an explicit reference to marijuana ought to be rejected on the grounds of public policy.
The sign that was included in a trade mark application concerned a figurative and word mark. On the figure, the EUIPO considers that "the stylized reproduction of the cannabis leaf was the symbol of marijuana used by the media", and regardless of the fact that the representation was not explicit, the reference to the soft drug was sufficiently obvious. The application included the word "Amsterdam", which was understood by the EUIPO to be a blatant reference to the city known for a liberal approach to the commercialization of this soft drug. A second word was also present: “store” - this, in combination with the figure and the word “Amsterdam”, was reasoned to evoke in the mind of the consumer the idea of a drug store.
The CJEU, confirms the EUIPO’s reasoning that this sign should be refused on the ground of public policy, as “it is for the combination of these different elements that the sign attracts the attention of consumers, [to a substance that] is illegal in many EU countries". While acknowledging that the leaf is a narcotic substance only above a certain level of tetrahydrocannabinol (THC), the depiction of which would be against public policy, the court reasons that the consumers are not ”in possession of scientific knowledge or precise techniques on cannabis” to be able to distinguish what would be a narcotic substance and what would not, and as such, the sign should be regarded as against public policy for the purposes of public health.
Art. 7(1)(f) of the EU Trade Mark Regulation (2017/1001) provides that trade marks which are contrary to public policy (or public order) or to accepted principles of morality, shall be refused registration at the EUIPO.
The case at hand primarily deals with a public policy argumentation, which is taken to refer to the laws and expressions of the beliefs and principles of society. The legal order, particularly in EU law, depicts a common understanding of said basic principles and values - for example, the fight against the promotion of drugs, counterfeiting, pornography, criminal activity and terrorism. Contrary to what one may think, the assessment of a public policy breach is an objective one (as opposed to a subjective judgement call): it consists of (1) an assessment of what is the meaning of the word or image, and (2) the application of the cultural norms around it against a reasonable consumer with average sensitivity and tolerance. Generally, the ground of refusal can only apply to signs that are unambiguously blasphemous, signs that are clearly offensive (T-417/10, ¡Que buenu ye! HIJOPUTA (fig.), § 21).
Public Policy in these proceedings
The CJEU noted that, despite the question of the legalization of cannabis for therapeutic purposes, "in the current state of the law, its consumption and its use beyond a certain threshold remain illegal in most Member States. Therefore, the fight against the spread of the drug derived from cannabis responds to a public health objective”.
This is not the first time the Office in Alicante encounters signs depicting cannabis leaves. A famous one was EUTM 3 239 514 for soft and alcoholic drinks. This was a graphic representation of the Virgin Mary, with a description reading “Ave Maria” (Latin for Hail Mary) crowned with a marijuana leaf, taking the place of the Aura. In this mark, we see a figure of great religious devotion amongst the general public, associated with a psychoactive substance that has negative connotations. The trade mark was refused, on the grounds of it being disrespectful and offensive towards the beliefs of a very large portion of society.
Art. 7(1)(f) EUTMR presents a notoriously difficult balancing test. While public policy as an absolute ground for refusal is often overlooked by applicants, it has proven to be a powerful weapon. Being contextual and evolving in character, it is of no surprise that words or symbols that have been banned years ago, can become mainstream tomorrow. Times change and society with it. It will be interesting to see where the third decade of the 21st century will take us.
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