• December 7, 2021

ILTMO Update: New Instructions on ‘Cannabis Trademarks’

In a recent decision, the ILTMO held that ‘cannabis trademarks’ and trademarks containing derivatives of the word cannabis must be limited to cannabis-related goods and that the use of cannabis trademarks in connection with non-cannabis products may render them deceptive and subject to revocation.

Applicant filed a trademark application for the mark CANNASMETICS in classes 3 and 5. The examiner rejected the application because the prefix CANNA is immediately associated with cannabis, whereas Applicant’s products do not contain cannabis-derived ingredients. On appeal, the Trademarks Commissioner held that deceptive marks are not eligible for registration and that the deception can also extend to the character and quality of the product. A mark which contains an abbreviation of the word cannabis will be perceived by consumers to contain cannabis or its ingredients. While consumers may check the list of ingredients on the product, this does not prevent potential deception. The Commissioner further held that use of the mark in a deceptive manner such as with respect to products that are unrelated to cannabis could lead to its revocation.

The Commissioner accordingly ruled that CANNASMETICS can only be registered in connection with goods that contain cannabis and that the lists of goods must be revised. The Commissioner acknowledged that the Trademarks Registry contains several previous ‘cannabis trademarks’ which were not limited in the above manner, but held that this does not create any binding precedent.

This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.

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