In a recent blog post we examined the evolving situation regarding the registrability of cannabis brands in Brazil. Today we turn to Mexico.
As a starting point, note that cannabis legalization efforts are much more advanced in Mexico than in Brazil. Mexican lawmakers are currently considering a law to legalize it, which the Senate has already approved. Medical use is legal and recreational use is de facto accepted thanks to the precedent set by the Supreme Court. This is a good time to mention that our Mexico-based cannabis lawyer, Adrián Cisneros Aguilar, is closely following these issues on this blog.
Information from one of the largest medical cannabis suppliers in Mexico confirms that, as in the past, there is no absolute barrier to the registration of trademarks related to cannabis. The company in question was able to register ten trademarks related to cannabis. While the Mexican Institute of Industrial Property (IMPI) raised objections during the application process, changes to the word mark or design in question resolved them. The problems concerned the similarity rather than the connection between the brands and cannabis.
At the same time, we know that IMPI rejected some applications for cannabis-related trademarks on the grounds that they violated federal industrial property law. According to Article 12 of this law, no trademark will be granted “if its content or its form is contrary to public order or a legal provision”. The problem is that cannabis isn’t entirely legal in Mexico: yes, the Supreme Court ruled the prohibition of personal use unconstitutional, but the law stays on the books. According to at least some reviewers, brands with terms like cannabis or marijuana encourage the use of a drug that is still illegal in Mexico. “As long as cannabis remains in a gray area,” explains Cisneros Aguilar, “IMPI can freely interpret and apply Article 12.”
As of December 29, 2020, IMPI had received a total of 210 applications for the registration of trademarks and trade phrases (avisos comerciales) with the term cannabis. Of these, only 27 have been approved so far, 21 of which correspond to the same commercial formulation – EMBRACING CANNABIS FOR LIFE – which is registered in numerous classes in both English and Spanish. (It’s worth noting that the applications in a have grown by about 5% two weeks Period in December 2020.)
Despite seven submissions, no application for the term marijuana was approved. Oddly enough, seven trademarks have been registered to use the term marijuana (out of a total of 12 filings), but none to self-identify cannabis (products covered include adult diapers, rubber gloves, and alcoholic beverages).
The term sativa has done better with more than a dozen registrations. Botanists and linguists might suggest that this reflects a reasonable understanding of the meaning of the word in Latin (“cultured”), but at least one of the markings clearly shows a cannabis leaf. This suggests that reviewers approve the applications with full knowledge of the term’s association with the cannabis plant.
It cannot be assumed that all unapproved applications have been or will be rejected. Trademark registrations take time, especially in the midst of a pandemic. In addition, there are several reasons that could explain the failure of some registrations, regardless of whether the brand is cannabis-related. Brands can face genericity or similarity issues: it’s not difficult to see how a device brand depicting a cannabis leaf can be very similar to other registrants’ brands. Using MARIJUANA to describe cannabis is the textbook definition of a generic brand. Other applications may have been rejected by registrants given the challenges posed by IMPI, as is often the case in other countries, especially if the applicants are not experienced business professionals.
Only two of the registered trademarks with the term cannabis – both owned by Canada’s Aphria Inc. – actually describe cannabis products. Of the remaining four, one is for a magazine about the cannabis industry and three belong to a financial services company providing services to cannabis entrepreneurs. While the sample size is very small, this may indicate that IMPI considers brands covering cannabis-related products or services to be cheaper than cannabis products themselves. However, the two Aphria registrations are examples of cannabis product brands approved by IMPI were.
The approval of the new Cannabis Law and Medical Use Regulations should end the application of Article 12 based on a brand’s relationship with cannabis (although it is possible that some prudish examiners particularly look for technical flaws). We can assume that the publication of both laws will dramatically increase the number of registrations for trademark applications. As mentioned earlier, the applications are already increasing. With that in mind, now may be the time to start filing applications to get at least a bit of the onslaught.