What advice would you give your clients about brand protection in your jurisdiction? Is it easy to trademark a cannabis brand?

Canada is in a different position than the majority of countries in the world – cannabis has been approved for medicinal use for 20 years. Legalisation of recreational cannabis happened in October 2018 and since then the IP considerations have played a central role in the industry’s business strategy. In particular, patents and trademarks
acquisition has been active.

There are about 8,000 cannabis-related trademark applications pending before the Canadian Intellectual Property Office. But there is a bifurcated statutory regime that impacts the Canadian cannabis industry. The trademark protection of cannabis-related goods and services is regulated through the existing Canadian Trademarks Act and regulations, but the use and advertisement of cannabis products to the public is governed by the Cannabis Act and regulations.

In the context of trademarks, the Canadian registrations may expressly cover cannabis in their claimed goods and services and go so far as to list in the Canadian Goods and Services Manual pre-approved items such as cannabis for smoking, dried cannabis, cannabis oil for foods etc. These marks are assessed by CIPO in the way that any other marks would be examined, namely in consideration of issues such as distinctiveness, descriptiveness and confusion. When Margret spoke about the use of words like ‘cannabis’ and ‘weed’, descriptiveness objections are likely and potentially also invite confusion objections. As with any other trademark, the real focus is to try to increase the level of distinctiveness or even acquired distinctiveness to get these marks through to registration which may serve to strengthen its reputation.

But even if you get the marks, what’s fascinating is the restrictions that Canada’s Cannabis Act imposes on the use of those marks. At a high level, the main focus of the legislation is not public morality and society writ large, but it’s specifically targeted to mitigate the impact of advertising to children and young people. You cannot advertise or display your marks in situations where it would be found to be appealing to young people or in a testimonial or in endorsements.

There are a couple of other strange stipulations trademarks and advertisements cannot promote glamour, recreation or excitement in association with cannabis. You cannot invoke thoughts of luxury or cutting-edge lifestyle using cannabis. And then there is the brand elements; its not only the word or design marks that are precluded from use in this way by the Cannabis Act, its also any distinguishing guises as well as everything associated with the brand identity that is not necessarily registerable.

The end result are two interrelated statutory instruments that have created a system where a given trademark registration may be available but use of that trademark may be curtailed or even prohibited.

Contributing Advisors