In Giampietro Torresan v OHIM [2009] T 234/06 (unreported), the Court of First Instance (renamed the General Court when the Treaty of Lisbon entered into force on 1 December 2009) upheld a declaration made by the Second Board of Appeal of The Office of Harmonization for the Internal Market (OHIM) that the registration of CANNABIS as a Community trade mark (CTM) for beer was descriptive.

BACKGROUND

Giampietro Torresan filed an application for a CTM for the word CANNABIS in Class 32 (beers), Class 33 (wine, spirits and sparkling beverages) and Class 42 (restaurant services). Shortly after the mark was registered, a declaration of invalidity as regards Classes 32 and 33 was sought by a third party. The declaration was granted and Mr Torresan appealed. OHIM’s Second Board of Appeal dismissed the appeal, finding that the word “cannabis” was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

Mr Torresan appealed to the Court, arguing that “cannabis” was not a normal way of designating beers or alcoholic beverages, not least because cannabis should not be regarded as a foodstuff, but as a narcotic and psychotropic, which precluded any lawful use of the substance in the Community. Since alcoholic beverages may not contain drugs, the relevant public could not establish a direct and specific relationship between alcoholic drinks and the sign CANNABIS.

DECISION

The Court noted that two scientific studies submitted by OHIM stated that cannabis was also referred to as “hemp”, which was used in food and beverages. Accordingly, the Court rejected Mr Torresan’s argument that his beer could not lawfully contain cannabis, as hemp was commonly used as a flavouring, provided that its content of the psychotropic ingredient tetrahydrocannabinol was below the acceptable threshold.

The Court upheld the Board’s finding that those who purchased a beer called CANNABIS would probably do so because they believed that it contained cannabis. Consequently, the fact that cannabis was one of the components of the beer constituted a characteristic that determined the decision the consumer made. The Court held that the sign CANNABIS may designate one of the ingredients used in the manufacture of the goods for which the mark was registered.

The Court’s finding of descriptiveness was unaffected by Mr Torresan’s argument that the beer contained no cannabis; in fact, the Court held that this argument was paradoxical. Either the beer contained hemp and the mark CANNABIS was descriptive, or it did not and the mark was deceptive.

COMMENT

One cannot help but wonder whether the average consumer would really believe that beer called CANNABIS actually contained cannabis, since it is widely known that cannabis is an illegal narcotic in most of the Community. Still, once Mr Torresan had begun to argue that the mark could not be descriptive because it contained no cannabis, he was heading inevitably towards a finding that the mark was either descriptive or deceptive.