Background
In 2018, the Bavarian company, Bavaria Weed GmbH applied for the following sign as an EU figurative mark at the EUIPO:
Trademark protection was sought for services in classes 35, 39, 42, and 44 (among others: distribution, public relations, pharmaceutical and laboratory services, research and manufacturing, all relating to medical cannabis).
In 2019, the trademark application was rejected by EUIPO on the grounds of an infringement of public policy under Article 7(1)(f) of Regulation (EU) 2017/1001. The applicant filed an appeal against this decision with the EUIPO, which, however, was rejected by a decision in 2020, as the examiner's assessment in the application procedure was not legally objectionable. Bavaria Weed GmbH brought an action against the rejection before the GC, and requested that the contested decision be annulled.
Judgment of the General Court T-178/20:
The GC points out at the outset that the absolute ground for refusal of registration of an infringement of public policy or morality is enforceable, even if the infringement is to be regarded as such only in part of the Union. In this respect, a reasonable person with an average sensitivity and tolerance threshold is to be regarded as the relevant public. The latter need not be interested in the relevant goods and services, since the sign may also cause offence to persons who encounter it by chance in everyday life. In turn, the perception of the relevant public could be influenced by circumstances prevailing throughout the Union as well as in individual member states.
As to the sign element "weed", the court found that, in combination with the graphic representation of a cannabis leaf, the relevant public "will certainly think of the recreational use of that substance, which is prohibited in many member states." The court reached this assessment because it was known that the term "weed" colloquially denotes cannabis for smoking. In its colloquial meaning, the term "weed" therefore refers to a drug used in a recreational context. As the EUIPO has also already correctly stated, this term is not being used in the medical field. The assumption that the services covered by the protection of the sign are legal in the EU has no influence on the perception of the relevant public.
Overall, according to the GC’s findings, it is not to be expected that the sign will be perceived as referring exclusively to the therapeutic use of cannabis. Rather, the relevant public would perceive the sign "as promoting and advertising, or at least trivializing, the use of marijuana as a prohibited and illegal substance."
Regarding the disturbance of public order, the Court finds that Regulation (EU) 2017/1001 does not contain a legal definition of the term "public order". Furthermore, since Union law does not yet provide for any regulation of the use of products derived from narcotics and since - as shown - it is sufficient that a breach of public policy exists only in one part of the Union, the concept of public policy covers the protection of various interests that a member state recognizes as essential to its system of values.
According to the GC, "[t]he fight against the distribution of marijuana [...] is of particular importance because it corresponds to a public health objective, namely combating the harmful effects of such a substance." Against this background, the rules adopted by the member states on the handling of narcotics serve to protect a fundamental interest of the member states and their system of values and thus public order within the meaning of Article 7(1)(f) of the Regulation.
In addition, this interest also exists on a Union-wide basis, since, pursuant to Article 83 TFEU, illicit drug trafficking is one of the areas of particularly serious crime with a cross-border dimension in which action by the Union legislature is envisaged.
With regard to the infringement of the principle of equal treatment, the Court held against the applicant that the prior decision-making practice of the Office was not relevant. Furthermore, the proceedings referred to concerned a trademark application with the sign element "cannabis". In contrast to "weed", this term covered a substance whose therapeutic use was under discussion and did not refer to marijuana in a colloquial sense. National successful "weed" trademark applications are also irrelevant for assessment at the Union level, as the "Union system for trademarks is an autonomous system" whose "application is independent of any national system."
Comment
So, should this ruling of the General Court now be understood to mean that no cannabis-related trademark applications will be allowed to proceed to registration in the future? This should not be the case. The court's statements are to be explicitly understood in such a way that only the use of the term "weed" for medical/therapeutic services is excluded.
This ruling also does not necessarily have an impact on the national registration procedure, as it is explicitly stated that the court reached its assessment, among other things, due to the more restrictive legal situation existing in parts of the Union with regard to cannabis.
Authored by Thorsten Klinger
