Developers of innovative products will want to protect their investment with trade mark protection. Although not a protection against product copying in the way that a patent is, trade marks can last indefinitely and offer an important form of market protection especially after patent and/or supplementary protection certificate expiry.
As with patents, there may be moral or policy-based objections to trade mark registration. EU trade mark law, for example, prohibits trade mark registration on the basis that it is "contrary to public policy or to accepted principles of morality". This involves a degree of judgment and subjectivity, making it one of the most difficult trade mark rules to apply.
EU IP Office guidelines make clear that the wording of this rule “is very broad and allows a great deal of room for interpretation”. A careful balancing act is needed to weigh the right of traders to freely employ words and images in the signs they wish to register as trade marks against the right of the public not to encounter disturbing, abusive, insulting and even threatening trade marks. The point of the rule is to exclude trade marks from registration where granting a monopoly “would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society”.
This reference to the moral norms of society points out the difficulty. Where policy and public views are shifting, the standard applied will need to reflect those trends.
The prohibition divides into two categories:
- Public policy refers to “the body of all legal rules that are necessary for the functioning of a democratic society and the state of law”. Any trade mark application that could support the activities of a terrorist organisation, for example, is likely to be excluded by this objection.
- The second category is “accepted principles of morality”. Although this concerns people’s subjective values, a trade mark examiner has to attempt an objective assessment. The standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds.
The EU IP Office has received numerous cannabis-related trade mark applications. While objections have been raised in relation to many of these, some have been granted and appear on the register as valid trade marks.
A recent ruling illustrates the problems. Three years ago, a Ms Santa Conte applied to register a logo showing cannabis leaves with the words CANNABIS STORE AMSTERDAM as an EU trade mark.
The idea was to use the mark on drinks and food products, and in shops. The office initially rejected the application for other reasons, although at appeal level the application was rejected on the basis of the public policy objection.
Ms Santa Conte took the issue to the European Courts. She argued that the word cannabis in the logo would be understood as referring to hemp. An earlier court decision had identified three possible meanings for the word ‘cannabis’: a textile plant, subject to EU market regulation and controls on THC content, a narcotic substance which is widely prohibited, and a possible medicinal product. Here, it was concluded that the inclusion of the words “STORE AMSTERDAM” and the stylised leaves would lead the public to conclude that the narcotic was being referred to.
When considering the public policy objection, the law looks at the standard of a reasonable person with average sensitivity and tolerance thresholds, and not just the target customer group of young people who are well-informed about cannabis products. The court noted the patchwork of different restrictions across the EU, but also that in many countries, cannabis-derived products with more than 0.2% THC are illegal.
Given the public health issues and organised crime involvement in drug trafficking, the narcotics ban in many countries was a particularly sensitive one and did engage the public policy objection.
This case clearly demonstrates how trade mark protection can run up against obstacles where an association with illegal narcotics is concerned. However, a carefully chosen trade mark for a medicinal product is unlikely to face the same issues. A producer will want to emphasise the pharmaceutical properties of the product and if anything, avoid association with recreational drug use.