Articles and Information

Background

At the end of 2018 and beginning of 2019, with the legalization of the cannabis industry in various jurisdictions, many foreign companies engaged in such industry led applications to protect their trademarks in Brazil.

The Brazilian Patent and Trademark Office (INPI), when examining such applications, focused on the fact that cannabis products could not be commercialized in Brazil. Only companies producing medicinal products including cannabidiol or cannabis in their formulas were able – after some dispute with INPI – to register their trademarks in the country. Other companies manufacturing products with cannabis in their composition or even providing services related to the cannabis industry had their trademark applications rejected – and the grounds for rejection of the applications were multiple.

The Trademark Manual adopted by INPI determines that trademark applications whose specifications cover products that are considered “illicit” cannot be registered in Brazil due to the application of Article 128, Paragraph 1 of the Trademark Law , which reads as follows: “Private legal entities may request only the registration of a mark relating to the activity that they effectively and licitly exercise, directly or through undertakings that they control directly or indirectly, such condition having to be declared on the actual request, subject to the penalties of the law”.

However, such understanding is arguably mistaken. Although the products (except medicines) cannot be sold in Brazil, the companies ling applications for their trademarks are legally and effectively engaged in such industry in their home countries. Therefore, said provision of the Trademark Law does not apply to them.

Moreover, this interpretation is against the provisions of Article 7 of the Paris Convention, which establishes that “the nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark”. Professor Bodenhausen, director of the United International Bureaux for the Protection of Intellectual Property, stressed that this provision of the Paris Convention “would also apply when the use of trademarks is prohibited for any category of goods” (“Guide to the Application of the Paris Convention for the Protection of Industrial Property”, BIRPI 1968, page 128).

Recent INPI decisions

Recently, INPI has seemingly changed its rationale when examining trademark applications related to the cannabis industry, or has simply been confused and inconsistent in its decisions – as is often the case.

In September 2023 it granted registrations for marks such as:

• CANNABISTORE MEDICAL SUPPLY in Class 35;
• COOPCANNABIS SERRA DA MANTIQUEIRA in Classes 5 and 44;
• ESCOLA CANNABIS in Classes 41 and 42; and
• DIVINA FLOR (…) CANNABIS MEDICINAL in Class 5.

In August, it had also granted registration of the marks CANNABIS BIO FERTILIZER in Class 1 and CANNABIS CYCLING CLUB in Class 25.

However, also in August, INPI rejected ve applications for marks including the term ‘cannabis’ in their word elements, apparently ignoring its own guidelines:

• Three applications were rejected because the marks allegedly reproduced earlier registered marks;
• One mark was considered to constitute a false indication of origin (CANNABIS STORE AMSTERDAM ORIGINAL, applied for by an Italian company in Class 35); and
• MADE IN CANNABIS in Class 3 was rejected based on various grounds: a rst refusal was based on the ground that the mark did not cover medicines; a second refusal considered that the mark was a false indication of the nature of the products; and a third and nal refusal considered that the mark included elements that were commonly used in relation to the products covered by the application.

Conclusion

Amazingly, the trademark registrations granted in August and September 2023, while including ‘cannabis’ in their word elements, did not contain any reference to cannabis in their specifications of the products or services.
It seems that INPI is still more concerned about the goods and services covered by the applications than with the applicants’ rights to register their marks in Brazil.

This article first appeared in WTR Daily, part of World Trademark Review, in October 2023. For further information, please go to www.worldtrademarkreview.com.

Ricardo Pinho