„Bavaria Weed“ - A Trademark Application Contrary to Public Order?!
When hearing about the „BavariaWeed“ decision of the European General Court (Decision of 12 May 2021, T-178/20 – currently only available in German and French) for the first time, one‘s initial reaction might be to say „I thought we were over that.“ However, when you take a closer look at the reasoning and take into account that the mark had been filed with the European Union Intellectual Property Office (EUIPO), asking for trademark protection in all – back then 28 – EU Member States, it becomes obvious that it is not that easy… And, even if the EUIPO does not want to register the mark – guess what?! The German Patent and Trademark Office did!
In 2018, a recently established distributor of Cannabis products to pharmacies across Germany with a seat in a small town close to Munich filed EU Trademark Application No. 017997323 for the word/device mark „BavariaWeed“ as pictured above. The application designates different services in classes 35, 39, 42 and 44 – all relating to the distribution and promotion of cannabis for medical use.
The EUIPO including the Board of Appeal rejected the application based on Article 7(1)(f) EUTMR for being contrary to public policy.
II. Recent Decision of the European General Court
On 12 May 2021, upon further appeal, the European General Court confirmed the refusal relying on the following reasons (Case T-178/20 – BavariaWeed):
- The relevant, English-speaking public will easily understand the word part "weed" as a slang term referring to "marijuana". Thus, the trademark application would endorse the use of this drug as a lifestyle product for leisure purposes which is detrimental to the public order in individual EU Member States.
- Although legalizing certain uses of cannabis is being discussed on EU-level, the consumption of marijuana is still illegal in some EU Member States, which is sufficient for a refusal under Article 7(1)(f) EUTMR.
- The assessment of a ground for refusal under Article 7(1)(f) EUTMR cannot be limited to the public to which the designated services are directly addressed, in this case doctors, nurses and patients. Instead, it must be considered that the sign applied for will also be seen by other persons who, without being concerned by those services, will encounter the sign incidentally in their day-to-day lives. These persons might not be aware of the official rules on cannabis products for medical use and might perceive the figurative mark „BavariaWeed“ as support for narcotics. Thus, the threshold for refusing a trademark application under Article 7(1)(f) EUTMR should not be set too low.
The perception of a trademark application as being contrary to public policy is not the same in all EU Member States, inter alia for linguistic, historic, social and cultural reasons. Therefore, while use of cannabis for medical purposes might have become more liberal over the past years, there are still different standards in the various EU Member States that need to be taken into account during the trademark registration process.
Interestingly, on 30 April 2021, the applicant had also filed German Trademark Application No. 30 2019 214 565 for the same figurative „BavariaWeed“ mark with the German Patent and Trademark Office basically covering the same services not restricted to „cannabis“. This application got registered within less than a month… As you can see, not all trademark related issues have been harmonized throughout the EU member states. Therefore, it is still important to strategize trademark applications and have knowledge of case law – in the EU and around the world.
Should you like to discuss the decision of the European General Court regarding the refusal of the „BavariaWeed“ mark, you are welcome to comment on this article or contact us by email to email@example.com or by phone: +49 89 55 87 98 70.
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