{"id":1496,"date":"2023-12-05T08:58:03","date_gmt":"2023-12-05T11:58:03","guid":{"rendered":"https:\/\/guerraip.com\/?p=1496"},"modified":"2023-12-05T09:33:34","modified_gmt":"2023-12-05T12:33:34","slug":"cannabis-industry-trademarks-brazilian-pto-issues-conflicting-decisions","status":"publish","type":"post","link":"https:\/\/guerraip.com\/en\/2023\/12\/05\/cannabis-industry-trademarks-brazilian-pto-issues-conflicting-decisions\/","title":{"rendered":"Cannabis industry trademarks: Brazilian PTO issues conflicting decisions"},"content":{"rendered":"

Background<\/strong><\/p>\n

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.<\/p>\n

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.<\/p>\n

The Trademark Manual adopted by INPI determines that trademark applications whose specifications cover products that are considered \u201cillicit\u201d cannot be registered in Brazil due to the application of Article 128, Paragraph 1 of the Trademark Law , which reads as follows: \u201cPrivate 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\u201d.<\/p>\n

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.<\/p>\n

Moreover, this interpretation is against the provisions of Article 7 of the Paris Convention, which establishes that \u201cthe 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\u201d. Professor Bodenhausen, director of the United International Bureaux for the Protection of Intellectual Property, stressed that this provision of the Paris Convention \u201cwould also apply when the use of trademarks is prohibited for any category of goods\u201d (\u201cGuide to the Application of the Paris Convention for the Protection of Industrial Property\u201d, BIRPI 1968, page 128).<\/p>\n

Recent INPI decisions<\/strong><\/p>\n

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.<\/p>\n

In September 2023 it granted registrations for marks such as:<\/p>\n