Following on from our three-part series on intellectual property protection and commercialisation of new medicinal cannabis varieties (see here, here and here), we outline below the ‘trade mark perspective’ on the protection of new medicinal cannabis plant varieties and medical marijuana products under Australian law. We also provide some updates on developments in the food standards and food labelling laws in Australia in relation to hemp products.
Trade marks for use in relation to both medical and recreational cannabis and marijuana can now be registered in Australia. Savvy businesses have been fast to take advantage of the ability to protect their rights in their trade marks in this growing industry, and there are now over 60 trade mark applications and registrations on the Australian Trade Marks database covering ‘cannabis’ and ‘marijuana’, almost all of which have been filed or proceeded to registration since the recent changes to the law (in March 2016) allowing for the production of cannabis and cannabis resin for medical and scientific purposes
Trade Mark Law Basics
In Australia, trade marks are broadly defined as “signs” used in the course of trade to distinguish and identify goods and services as originating from a particular trader or business. “Signs” includes words, logos, shapes, colours, scents and sounds. Subject to some exceptions, to be eligible for registration a trade mark must be distinctive (in that it does not directly describe the goods or services being offered by the trader) and must not be substantially identical with or deceptively similar to a trade mark already registered by another trader for the same or similar goods and services. The trade mark must also not be substantially identical to a trade mark already in use by another trader for the same of similar goods and services, and must not be likely to cause consumer confusion.
Registered trade mark protection is effectively perpetual — trade marks are initially registered for a period of 10 years, but further 10 year registration periods are granted upon payment of renewal fees. However, once a grace period of 5 years from the application date has passed, a registration becomes vulnerable to cancellation if the trade mark is not used in Australia for a continuous period of three years.
Medical Marijuana Trade Marks in Australia
Australian trade mark law prevents the registration of trade marks that “contain scandalous matter” or the use of which would be “contrary to law”. As the promotion and sale of cannabis or marijuana for any purpose was previously a criminal offence (and remains so if for recreational use), historically the Australian Trade Marks Office had, in some cases, raised (at least initially) objections to the registration of trade marks associated with selling or promoting cannabis or marijuana on the basis that the use of those marks would be illegal. In addition, registrations for such marks were typically vulnerable to opposition/cancellation by a third party on the basis that, as the sale of cannabis or marijuana was illegal, there could be no intention to lawfully use the trade mark in Australia.
However, since the recent amendments to the Narcotic Drugs Act 1967 (Cth) to allow for the production of cannabis and cannabis resin for medical and scientific purposes, the official practice has changed and a number of trade mark applications have been accepted for specifications including “cannabis” and “marijuana”, even where the goods and services claimed include use of those goods for recreation purposes (such as Registration No. 1843525 EVE-OLUTION, which covers, amongst other goods, “recreational cannabis products” in class 34). Allowing registration of marks for “cannabis” and “marijuana” is consistent with Australia’s obligations under International Law, and particularly the Paris Convention for the Protection of Industrial Property, under which countries are not permitted to refuse to register trade marks based on the nature of the goods for which registration is sought.
Trade marks for use in relation to both medical and recreational cannabis and marijuana can therefore be registered in Australia, and businesses in the field should take advantage of the ability to protect their rights in this respect. All aspects of the brand, including words, logos, slogans, 3D shapes, colours, moving images, scents and tastes can theoretically be protected as trade marks.
Two important considerations when developing branding for goods and services generally, and for branding medical cannabis or medical marijuana products in particular, are:
- As with other plant-based products, a clear distinction should be made between the name of the plant variety and the “brand” name (trade mark) used in association with the company’s goods produced from that plant variety. Australian Trade Mark law does not allow a trader to register as a trade mark the name of a protected, or previously protected, plant variety under a Plant Breeders’ Right. In addition, distinctiveness objections will be raised where traders need to legitimately use the name to describe their products as coming from that plant (even if the trade mark applicant is the only source of root stock for the plant variety itself). However, businesses should seek protection of the trade marks they adopt in relation to their goods and services associated with medical cannabis and medical marijuana.
- It is important that appropriate searches of the trade marks register and the marketplace be conducted before use commences — other traders (particularly those in the agricultural, pharmaceutical and research and development spaces) may own trade mark registrations that could pose significant risks to the adoption of a trade mark in the medical marijuana and medical cannabis field, even if those traders are operating in slightly different fields.
Food labelling and hemp products
In November 2017, the Australia New Zealand Food Standards Code was changed to allow certain products derived from hemp seeds to be sold and marketed as food products. ‘Hemp’ is defined by in the Code by reference to Australian State and Territory legislation. State and Territory legislation defines ‘hemp’ by reference to the THC level present in the lead of the cannabis plant, and the maximum amount permissible varies from state to state.
For businesses in the food industry, it is important to remember that, under the Australia New Zealand Food Standards Code, restrictions apply to claims and representations about foods that are, or contain, hemp products. The food for sale must not be labelled or otherwise presented for sale in a form which expressly or by implication suggests that the product has a psychoactive effect. This should be considered when coining the trade mark to be applied to the food.
Among other things, the label for the food must not include the words “cannabis”, “marijuana” or words of similar meaning (the label/name may include the word “hemp”) or an image or representation of any part of the Cannabis sativa plant (including the leaf of that plant) other than the seed. A label, in relation to a food being sold, means any tag, brand, mark or statement in writing or any representation or design or descriptive matter that:
(a) is attached to the food or is a part of or attached to the packaging;
(b) accompanies and is provided to the purchaser with the food (eg. promotional materials, cutlery sleeves, napkins); or
(c) is displayed in connection with food when it is sold (eg. in-store posters, menus).
Brand owners should also consider these requirements when developing logos and related packaging, signage and promotional materials for their hemp food products.
Medical Marijuana Trade Marks Internationally
Trade mark protection for medical cannabis and medical marijuana related goods and services can be obtained in other jurisdictions (such as Canada). However, many other jurisdictions also refuse to register trade marks where their use would be contrary to law, morality or public order. This is the current approach in the United States, where applications to register trade marks for marijuana have been routinely refused by the USPTO on the basis that the marks cannot be “lawfully used in commerce”.
It is therefore important to seek advice before considering whether to register trade marks for medical marijuana and medical cannabis products in other jurisdictions.
Trade marks for use in relation to medical cannabis and medical marijuana can be registered in Australia. However, it is important to remember that as recreational cannabis and marijuana use remains illegal in Australia, there remains a possibility that an initial registrability objection on lawfulness grounds may be raised if the Australian Trade Marks Office considers the mark promotes illegal activity, even though registrations broad enough to cover recreational products have been obtained and the above international convention is applicable. Further, when developing trade marks and packaging for cannabis related products, traders should keep in mind the restrictions in the relevant food labelling laws, as this may limit the ability to use (as opposed to register) their trade marks in Australia.
From an international perspective, international trade mark law and practice are not uniform so it is important to obtain good legal and strategic advice before proceeding with an international marketing and filing strategy for your trade marks.
Finally, the easing of restrictions on the sale of cannabis-related products in Australia has led to a sharp increase in the number of cannabis-related marks being filed with the Australian Trade Marks Office, and savvy brand owners in the field should take steps now to ensure that their marks are adequately protected in Australia.