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Executive Summaries Sep 23, 2018

Trademarks and Cannabis: Tailoring a Strategy

You have decided to take advantage of the opportunity that is the cannabis market, its accessories or related services – or you are considering seizing it. To make your mark and distinguish yourself from others doing the same thing, you have come up with an original name and maybe even a logo under which you will be known. Although this is a step in the right direction, you will need to perform some verification that goes well beyond what generally applies in this regard.

As it is the case for any good or service that is intended to be known under a name or logo, and thus under a trademark, it is important to verify as soon as possible that the mark is available, preferably before using it, to make sure that it is not likely to create confusion with trademarks (registered or not) and trade names used by others, who might bring legal action against you and claim damages for infringing their rights. All in all, an availability search is not expensive compared to the potential costs of having to change a trademark in those circumstances. An availability search for the proposed trademark is therefore strongly recommended; for the cannabis field, however, it might not be enough.

The restrictions imposed by the Cannabis Act must be taken into account in choosing the proposed mark itself. For example, it is not permitted to display on a package or label or to promote cannabis, a cannabis accessory or any service related to cannabis, an element that:

  • would be appealing to a person under 18 years of age;
  • depicts a person, character or animal, whether real or fictional; or
  • associates it with or evokes a positive or negative emotion or image about a way of life such as one that includes glamour, recreation, excitement, vitality, risk or daring.

Accordingly, while creativity is generally recommended when it comes to trademarks, the above examples of restrictions actually dampen the creative impulse. It is therefore possible that a mark, such as a depiction of an animal or the name of a fictional person may be considered to be registrable under the Trademarks Act, but it will still not be possible to display it on product packaging or labels or to use it in the promotion of services related to cannabis.

In addition, since the Cannabis Regulations tend to dehumanize packages, labels and the promotion of products and services related to cannabis, you should verify the leeway you will have in the deployment of your trademark, particularly when it comes to the associated logo and colour(s).

To conclude, in addition to making sure as soon as possible that a cannabis trademark is available and is potentially registrable in Canada under the Trademarks Act, you must also make sure that there is no restriction applying to its use by the Cannabis Act and its regulations. A tailored strategy for developing and protecting a trademark relating to cannabis is therefore needed, sooner rather than later.