There is no denying that the marijuana legalization landscape is contentious and demands attention, including from trademark attorney, who will increasingly see their clients interested in cannabis related business activities. The current international legal framework for drug control regimes based on three United Nation Conventions, the single convention on Psychotropic Substance 1971, and the Convention against illicit Traffic in Narcotic Drugs and Psychotropic substance 1988.
The aim of these conventions is to establish rules of international capability that restricts use of psychoactive drugs to scientific and medical use. There is growing debate in regions such as US and Europe, over legalization of drug especially cannabis. Such concern arose from the abuse, misuse and financial loss incurred by illegal drug channel to affected countries. Advocates of legalization argue that by legalizing the use of cannabis, government can regulate the channel of commerce to potentially and illegal drug sale.
With California joining in permitting the adult use of cannabis outside of strictly medical purposes, the trend in the country seems to be headed in the direction of normalizing use of cannabis as more states follow suit and voters pass resolutions and ordinances legalizing such recreational use. This trend of legalization is attracting a different set of players to the cannabis industry. Multi-national corporations and entrepreneurs from the art world with high-tech facilities are slowly replacing the picture that comes to mind of a lone pot dealer in a shady area of town.
The Madrid Agreement and Protocol, collectively the Madrid System, was designed to offer trademark owners an avenue for filing international trademark applications through a single platform. This is an attractive option for companies that want to expand their IP portfolio globally as the Madrid System covers 114 countries representing more than 80% of world trade. Some of the benefits include filing one application in one language, paying a single fee for filing and renewals (except for the U.S which requires USPTO renewals) and recording third-party assignments centrally with the International Bureau (“IB”) at the World Intellectual Property Organization. It’s important to note that even though cannabis is classified as a Schedule I drug under the Controlled Substances Act in the U.S, federal trademark protection can still be obtained for cannabis related goods and services based on certain first amendment rights. However, not all countries in the world have such strong protections for freedom of expression and hence any indication of cannabis related goods or services might be refused registration.
EU member states have not harmonized regulations that create a framework for the legality of cannabis use; member states have varied laws that are different from each other and so an activity that is permissible in one member state may have criminal penalties in another. Therefore, an EU trademark seems hardly plausible for cannabis goods or services given it may very well be contrary to the public policy of multiple member states and therefore cannot have the desired effect of an EU trademark—equal and uniform applicability throughout the Union. It’s important to note that in Europe, some cannabis-based medicines, such as Sativex and Bedrocan, have been authorized for use after obtaining European regulatory approvals.
Countries like Canada, Uruguay have legalized the use of recreational cannabis and are not part of Madrid system. Trademark owners’ can apply directly to IP office of such countries and register their mark. An issue of trademark owners to also consider when deciding to file either through Madrid system or directly to National IP office. The Madrid System, EUIPO, ARIPO and OAPI/AIPO can be considered for classes that are non-cannabis based like clothing, accessories etc. This allows companies to create a presence in their territories of interest and build brand familiarity before introducing cannabis products, if allowed, to the market. For cannabis-based trademarks, under the current international legal framework, it’s sensible to apply directly to the countries where cannabis use is legal in some capacity and avoid single-filing platforms that generally avoid accommodating controversial marks.