4 trademark law tips that cannabis brand owners need to know

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Courtesy of Lift Magazine

The Canadian government is legalizing the possession and consumption of cannabis for recreational purposes. But Canada’s cannabis industry is already thriving with many licensed (and unlicensed) producers, all vying for the attention of consumers with different brands and strains of cannabis in a market that is quickly heating up. Currently, there are nearly 1,700 trademark applications and registrations on the Canadian Trademarks Database related to “cannabis” or “marijuana.”

In this two-part series, we explore some of the unique challenges faced by brand owners, start-ups and “ganjapreneurs” in Canada’s cannabis industry. Here’s what you need to know – ideally before you launch:

The Canadian Intellectual Property Office accepts trademark applications covering “cannabis” and “marijuana”

In order to obtain registered trademark rights in Canada, one must file a trademark application with the Canadian Intellectual Property Office (CIPO). Among other things, the application must include a description, in “ordinary commercial terms,” of the goods and/or services with which the applicant has used or intends to use the applied-for trademark. In Canada, CIPO will accept descriptions that explicitly refer to cannabis or marijuana, such as “dried cannabis,” “live cannabis plants” or “medicinal marijuana for temporary relief of seizures.”

In the United States, the U.S. Patent and Trademark Office (USPTO) will not allow an application that lists “cannabis” or “marijuana” among the goods associated with an applied-for trademark because these substances cannot be lawfully distributed or dispensed under U.S. federal law. A July 2016 decision of the USPTO Trademark Trial and Appeal Board suggests that even a trademark application covering “retail store services featuring herbs” may be refused if the “herbs” in question are “marijuana.”

Not so in Canada, where “medical marijuana” may be lawfully distributed or dispensed under the Controlled Drugs and Substances Act (CDSA) and Access to Cannabis for Medical Purposes Regulations (ACMPR). Cannabis brand owners in Canada and abroad should therefore apply to register their trademark rights with CIPO and obtain the exclusive right to use their marks in Canada in association with controlled substances like “cannabis” or “marijuana.”

A trademark registration can serve as both a sword and a shield

Besides entitling its owner to the exclusive use of the subject trademark in Canada in connection with the registered goods and/or services, a trademark registration also entitles its owner to prevent others from using the same mark, or a confusingly similar mark, in Canada in connection with the same or similar goods and/or services. Those seeking to enforce their trademark rights against others would be wise to register those rights with CIPO. Otherwise, a brand owner is limited in its ability to prevent others from using a similar mark, and instead must rely on its common law rights and earned reputation in Canada, which can be costly and difficult to prove in Court.

Furthermore, a registered rights holder can obtain permanent injunctive relief against an infringer even if the rights holder’s mark is not in use in Canada. While the registration of a trademark that is not in use is

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