A trademark will not be registered, or can be removed from the register, if it is:
- inherently deceptive or likely to deceive or cause confusion;
- contrary to law;
- against good morals; or
- likely to offend anyone.
This article provides insight into the contrary to law provision, particularly insofar as it relates to the controversial discussion regarding the partial legalisation of cannabis in South Africa and its impact on trademark law.
Legalisation of cannabis
The well-known 2018 Constitutional Court judgment on the legalisation of cannabis in South Africa held that the use or possession of cannabis in private, or the cultivation of cannabis in a private place, for personal consumption in private is no longer a criminal offence.
How does ruling affect trademark law?
It may be assumed that trademarks which incorporate or directly or indirectly reference cannabis can now be registered. However, the matter is not as straightforward as it appears.
Although the Office of the Registrar of Trademarks' guidelines on the Examination of Trademark Applications appear to concede that the above ruling has the effect that any mark – including words, symbols, phrases, letters or images – relating to cannabis will no longer be deemed contrary to law, this exception is met with the condition that:
- the mark meets the overall threshold of trademark registration; and
- the application will proceed to registration subject to the applicant undertaking that the goods or services offered under such mark comply with the minister of health's parameters as sometimes published in the Government Gazette.
Therefore, an application to register a trademark that features the word 'cannabis', or an element reasonably understood as a reference to cannabis, could still be refused on the basis that it does not satisfy Sections 9 and 10 of the Trademarks Act (194/1993) or that the use of the proposed goods falls foul of the minister of health's requirements.
In addition, likely future regulatory restrictions (similar to those imposed on the tobacco industry) regarding advertising, food labelling and plant breeders' rights would need to be considered when venturing into the cannabis industry and seeking to acquire trademark rights in connection with such a venture.
Trademark applicants should obtain legal advice that is pertinent to such business ventures before making hurried decisions regarding the marks.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.