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Nov 10

EU trade mark: “CANNUBIS” refused registration on the ground that it is descriptive

In decision R 2651/2016 1, the trade mark “CANNUBIS” was considered to be inseparable from “cannabis” for the English-speaking public.

It was therefore considered descriptive of a series of products which could contain or contain this substance and was therefore refused registration.

The Article 7(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (hereinafter “EUTMR”) provides that:

“1.   The following shall not be registered: trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”.

This provision must be linked to the European trade mark law’s philosophy which aims at ensuring “a correct functioning of the economic freedom” (P. Roubier) by avoiding paralyzing a particular market. Its interest is indeed to prevent the creation of exclusive rights on purely descriptive terms that other traders might wish to use as well.[1]

 

Therefore, a sign must be refused as descriptive, if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for (the quantity, quality, characteristics, purpose, kind or size of the goods or services).

In the present case, the European Union Intellectual Property Office (hereinafter “EUIPO”) relies precisely on Article 7(1) EUTMR to refuse registration of the EU word trade mark “Cannubis” in classes 3, 5, 30, 32.

According to the EUIPO, the pronunciation of “CANNUBIS” would, for the English-speaking public, be identical to that of “CANNABIS”.

Moreover, in the event that the goods referred to in the wording of classes 3, 5, 30, 32 (food, beverages and cosmetics) are all made from cannabis or hemp oil or other cannabis-based ingredients, the sign must be considered descriptive and non-distinctive.

Consequently, the EUIPO has considered the application for registration as an EU word trade mark should be refused.

To read the full decision: https://euipo.europa.eu/copla/trademark/data/018048487/download/CLW/APL/2020/EN/20200831_R2651_2019-1.pdf?app=caselaw&casenum=R2651/2019-1&trTypeDoc=eTranslation&sourceLang=de

By Marie-Alix André and the IP/IT team

Source: EUIPO

Link: https://euipo.europa.eu/eSearchCLW/#basic/*//number/R2651%2F2019-1

[1] Cf. the Euipo trade mark guidelines, 1.1. The notion of descriptiveness, https://guidelines.euipo.europa.eu/1803468/1789874/trade-mark-guidelines/1-1-the-notion-of-descriptiveness

 

This post is also available in: French