Medicinal cannabis in Australia | Part 6: What’s in a Name – Trademark Protection for MC Strains

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In the field of medicinal cannabis, the names of varieties or cultivars of plants that are protected by a registered right such as a PBR (plant breeder’s right) are often reflected in the trade names of products derived from these plants. However, for reasons we explore below, it can hurt a company’s long-term business strategy.

Brands and cannabis – why now?

The juncture between trademarks and plant variety names for cannabis has recently been highlighted through the relaxation in many jurisdictions of criminal restrictions on the possession, use and supply of cannabis products. .

Australian law does not allow the registration of trademarks that are “scandalous” or whose use would be “contrary to law”. Prior to the 2016 amendments to the Narcotic Control Act 1967, this would have been an impediment to the registration of trademarks associated with cannabis and cannabis-related goods and services. However, as the production of cannabis and cannabis resin for medical and scientific purposes is no longer “against the law”, this has opened the door to the registration of trademarks in this space in Australia and many others. jurisdictions where similar transitions have occurred. .

The difference between variety names and brands

In Australia, breeders can protect new plant varieties through a registered PBR. During the application process, the breeder will need to assign a name to the grape variety (and possibly provide a synonym for the grape variety). A registered PBR lasts 20 years in Australia. For more information on PBRs and medical cannabis, read Part 4 of this series.

A key restriction on variety naming for PVP purposes is that the variety name cannot be, or include, a registered or pending trademark for products related to live plants, plant cells and plant tissues.

Although a plant breeder’s right confers various exclusive rights to produce and market the relevant varietal material, it does not confer any exclusive right to the name. That is, a purchaser or licensee of such plant variety material will be permitted to use the variety name to market the material or products derived therefrom itself. Indeed, they are likely to need to do so, in order to properly describe such material.

A trademark, on the other hand, is a “sign” (usually a name and/or a logo) that distinguishes the products and services of one trader from those of another. Trademarks may be registered or unregistered. Registered marks initially have a term of 10 years, but can be renewed in perpetuity for 10 years at a time, provided the mark is still in use.

In order to obtain registration, marks must be considered by IP Australia to be capable of distinguishing the goods or services of one trader from another. This excludes registration as trademarks of words that are descriptive of the goods or services to which they apply. Therefore, the name of a plant listed as a varietal name (or synonym) in the PPBR register cannot be registered as a trademark.

Plant breeders’ rights and trademarks create marketing opportunities and can be used in tandem. For example, the rights to the varietal could be licensed to a third party, while a trademark can generate customer tracking for a specific product derived from the varietal. A sophisticated marketing strategy will incorporate all forms of intellectual property available to ensure maximum return on investment.

Future-proof your brand management strategy for medical cannabis

As market players rapidly develop useful new cannabis strains and expand their drug offerings, it is important to ensure from the outset that approaches to POV and brand protection are aligned.

Consider the following (not uncommon) scenario: A company develops a new strain of medical cannabis that it wishes to protect via a PBR. When requesting PBR, it provides a varietal name and a synonym, which are placed on the PBR list. The new variety proved to be very useful and the company developed a product line from the new plant, adopting the varietal name from the PBR list as the trademark for the product line. As the product line becomes a commercial success and the brand of the product becomes strongly associated with the business and attracts customers, the business smartly seeks to protect the brand name with a trademark registration.

Unfortunately, the trademark application would almost certainly be dismissed as descriptive thanks to the PBR listing.

Although the company could continue to use the varietal name to designate its products, it could not prevent other merchants selling derivative products of the same variety from using the same varietal name for these products, for example when the company on – sells the material of the grape variety to other traders. When these third-party traders are required to identify the origins of the material by means of the varietal name, it can create confusion between the company’s products and those of other traders. Thus, the market value associated with the brand name is greatly diluted and may even be threatened by undesirable characteristics of third-party merchants’ products, which the consumer believes are from or are associated with the original company.

Additionally, once the 20-year monopoly granted by the PBR expires, and provided the product is not protected by other intellectual property, other marketers would be free to market products containing the variety without any license from company of origin, and to refer to their products by the varietal name, allowing other traders to benefit from the notoriety generated by the brand of the company.

The solution?

Develop different names for a grape variety (and its synonym) and your brand name. One option is to use alphanumeric denominations or appropriate scientific terminology to name plant varieties in plant breeder’s rights applications, while creating a distinct and original brand name for products derived from or related to that variety. This does not preclude using the strain name in your marketing material as well, and it is even better to clearly differentiate the brand. But it allows for branding that is unencumbered and can survive the 20-year lifespan of a PBR.

It is also important to consider the reverse situation in which a distinctive mark adopted by a PBR holder becomes known and used as a generic name for products derived from their variety. In this case, the trademark owner may lose their exclusive rights to the trademark, allowing anyone to use it. To avoid this scenario, care must be taken to ensure that the mark is always clearly identified as such and that any unauthorized use by a third party is properly controlled.

As always, a proper search of the Trademark Registry, Marketplace, and PBR Registry is also essential before engaging in any branding strategy.

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