Tag Archives: Cannabis

One Good Term Deserves Another: 60+ New Cannabis Terms for Canadian Trademark Applicants

In May 2021, CIPO added upwards of 60 cannabis- and marijuana-related terms to the Goods and Services Manual (the “Manual”).

Most of the new terms fall into Nice Classes 3 (non-medicated toiletry preparations), 5 (pharmaceuticals), and 30 (foodstuffs of plant origin). However, new terms have also been added in Class 16 (namely “printed publications in the field of cannabis”), 42 (“scientific research in the field of cannabis”) and 45 (“legal research in the field of cannabis”).

Many of the new terms describe medicinal uses of cannabis or marijuana, including the form in which the product is provided and the use covered by the description. Examples in this category include “marijuana oil for the relief of nausea”, “cannabis salve for the treatment of psoriasis”, and “cannabis capsules as a sleep aid”. The new entries in Nice Class 30 relate to snack foods containing cannabis, such as chocolate, cookies and granola.

Terms in the Goods and Services Manual are pre-approved by CIPO, meaning that they will be accepted without further specification if selected. This may help applicants avoid objections under s. 30(2)(a) of the Trademarks Act, which requires that applications contain “a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be use”. The level of specificity required may come as a surprise to foreign applicants, as they go beyond that which is required in many other countries.

In the absence of a pre-approved term, applicants and their trademark agents must rely on their judgment and more general criteria in order to define the goods or services covered by an application, such as analogies with other pre-approved terms or recently accepted applications. The addition of these terms may therefore remove a cloud of uncertainty faced by applicants in the cannabis space.

In adding these terms to the Manual, CIPO demonstrates its continued openness to facilitating filings related to cannabis and marijuana. Pre-defined terms for cannabis products date back to January 2018, when “dried cannabis” and “live cannabis plants” were added to the Manual, in the lead-up to the legalization of recreational cannabis in October of that year. 

Fasken’s team of experienced professionals are available to assist you with the full range of cannabis-related legal issues, including trademark matters.

Learn more about our Cannabis practice or Trademark practice.

IP Strategies for the Cannabis Industry

How the Canadian cannabis industry has sparked interest in one of the lesser known IP rights

Introduction

Intellectual Property (“IP”) typically provides a significant commercial advantage in the marketplace.  With the legalization of cannabis in Canada in 2018 and increasing competition among cannabis producers, the cannabis industry has been exploring ways to protect its cash crop.  Given that proprietary varieties of cannabis plants are highly valued in the cannabis industry, a lesser known and very specific type of IP right called Plant Breeders’ Rights (“PBR”) may see a rise in prominence.  Cannabis producers would be well advised to consider how PBR can be used to protect their commercially valuable proprietary varieties and supplement their existing IP arsenal.

PBR Eligibility and Scope of Protection

The federal Plant Breeders’ Rights Act enables the protection of a plant variety where that variety is:

  1. new, in that its propagating or harvested material has not been sold by or with the concurrence of the breeder inside or outside Canada within a prescribed time period (either one, four, or six years) before the filing date of the application;
  2. by reason of its identifiable characteristics, it is clearly distinguishable from all varieties whose existence is a matter of common knowledge at the filing date of the application;
  3. stable in its essential characteristics, in that after repeated propagation it remains true to its description; and
  4. having regard to the particular features of its sexual reproduction or vegetative propagation, it is sufficiently homogeneous (i.e. in the event of sexual reproduction or vegetative propagation in substantial quantities, any variations in characteristics are predictable, capable of being described, and commercially acceptable).
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