On Thursday, January 28, we will be hosting a FREE hour-long webinar discussing the business side of medical and recreational cannabis in Mexico. REGISTER TODAY!
In a recent blog post we considered the evolving situation concerning the registrability of cannabis trademarks in Brazil. Today we turn our attention to Mexico.
As a starting point, it is important to remember that cannabis legalization efforts are considerably more advanced in Mexico than in Brazil. The Mexican legislature is in the midst of considering a legalization bill, which the Senate has already approved. Medical use is legal and recreational use is accepted de facto, thanks to Supreme Court precedent. This is a great time to mention that our Mexico-based cannabis attorney, Adrián Cisneros Aguilar, tracks these issues closely on this blog.
Information provided by one of the largest medical cannabis providers in Mexico confirms there is no absolute bar on registration of cannabis-related trademarks—as there was in the past. The company in question has been able to register ten cannabis-related trademarks. While the Mexican Institute for Industrial Property (IMPI) did raise objections during the application process, these were solved by making changes to the wordmark or design in question. The problems were with similarity, rather than with the trademarks’ connection to cannabis.
At the same time, we know IMPI has rejected some applications for cannabis-related trademarks, on the grounds that they run afoul of the Federal Law on the Protection of Industrial Property. According to Article 12 of that law, no trademark will be granted “when its contents or form are contrary to public order or contravene any legal provision.” The problem is that cannabis is not entirely legal in Mexico: Yes, the Supreme Court has held the prohibition on personal use is unconstitutional, but the law remains on the books. At least in the view of some examiners, trademarks with terms such as term cannabis or marihuana promote the use of what remains an illegal drug in Mexico. “As long as cannabis remains in a grey area,” Cisneros Aguilar explains, IMPI “will be free to interpret and apply Article 12.”
As of December 29, 2020, a total of 210 applications to register trademarks and commercial phrases (avisos comerciales) containing the term cannabis had been received by IMPI. Of these, only 27 have been granted so far, with 21 corresponding to the same commercial phrase—EMBRACING CANNABIS FOR LIFE—registered in numerous classes, in both English and Spanish. (It is worth mentioning that applications grew by about 5% in a two-week period in December 2020.)
No application for the term marihuana has been approved, despite seven applications having been filed. Curiously, seven trademarks with the term marijuana (out of a total of 12 applications) have been registered, though none to identify cannabis itself (products covered include adult diapers, rubber gloves, and alcoholic beverages).
The term sativa has fared better, with more than a dozen registrations. Botanists and linguists might suggest this reflects a proper understanding of the word’s meaning in Latin (“cultivated”), but at least one of the marks prominently features a cannabis leaf. This suggest examiners are approving the applications in full knowledge of the term’s connection to the cannabis plant.
It should not be assumed that all applications that have not been approved have been or will be rejected. Trademark applications take time, more so in the midst of a pandemic. Moreover, there are several reasons that could explain the failure of some applications, irrespective of the fact the trademark is related to cannabis. Marks could face genericity or similarity issues: It is not hard to see how a device mark representing a cannabis leaf could look a lot like other registrants’ marks; using MARIHUANA to describe cannabis is the textbook definition of a generic mark. Other applications may have been abandoned by registrants in the face of challenges by IMPI, as often happens in other jurisdictions, especially when the applicants are not experienced businesspersons.
Only two of the registered trademarks containing the term cannabis—both belonging to Canada’s Aphria Inc.—actually describe cannabis products. Of the remaining four, one is for a magazine covering the cannabis industry and three belong to what appears to be a financial services company offering services to cannabis entrepreneurs. While admittedly the sample size is very small, this may indicate that IMPI looks more favorably at trademarks covering products or services related to cannabis, as opposed to cannabis products themselves. That said, the two Aphria registrations stand as examples of trademarks for cannabis products that were approved by IMPI.
The approval of the new cannabis law and the regulations for medical use should bring an end to the application of Article 12 on the basis of a mark’s relationship to cannabis (although it is possible that some prudish examiners will look extra hard for technical deficiencies). We can expect that the publication of both statutes will set in motion a dramatic increase in the number of applications for trademark-related applications. In fact, applications are already picking up, as mentioned above. With this in mind, now may be the time to file applications, to beat the rush at least a little bit.