Protecting medicinal cannabis trade marks in New Zealand

AJ Payk

Helen Bellchambers and Gillian Nelson, AJ Park

As medicinal cannabis products can now be sold in New Zealand, your brand is important because it allows consumers to distinguish your products from your competitors.

What is a trade mark?

A trade mark is a brand which connects a product or service with its supplier. Trade marks can be registered or unregistered and can include words, colours, logos, shapes, sounds, smells or any combination of these.

How trade marks are classified

Trade mark rights are limited to the types of goods and/or services covered by a trade mark registration. All goods and services are divided into 45 different classes, with each class loosely covering a type of good or service. Goods can fall into more than one class. For example, drinks could be in class 5 (medicinal beverages or beverages containing supplements), class 30 (milk, tea, coffee), 32 (non-alcoholic beverages), and/or class 33 (alcoholic beverages).

Prescribed medicinal products are class 5 goods (no matter what form they take) and controlled medicinal products are dispensed by a pharmacist (class 44), not retailed (class 35).

In addition to classes, a trade mark application must also accurately describe the goods or services that the mark will be used on. For example, for a new energy drink in class 32, the descriptions ‘drinks’ or ‘beverages’ would not be allowed because they do not provide enough information about the type of drink and which class it should be classified in. Instead, a description like ‘energy drink’, and perhaps ‘effervescent beverages (non-alcoholic)’ could be used.

Medicinal cannabis trade marks

The Intellectual Property Office of New Zealand (IPONZ) has developed guidelines explaining how they will approach trade mark applications associated with medicinal cannabis.

For medicinal cannabis, acceptable descriptions in class 5 include ‘medicinal cannabis oil; medicinal cannabis balm; medicinal cannabis cookies’. For robust protection, trade mark owners should consider covering all relevant medicinal cannabis products in class 5, regardless of whether these products are in capsule, oil, or edible form.

If the trade mark itself contains elements indicating that the goods are medicinal cannabis, but covers goods in other classes, IPONZ will object that the use of the trade mark is ‘likely to cause confusion’. This is because IPONZ considers that a consumer who encounters the mark (eg GREENIES MEDICINAL CANNABIS) on goods such as sweets may be confused or misled about whether the goods include medicinal cannabis. GREENIES MEDICINAL CANNABIS would be suitable for goods in class 5, but not in class 30 (confectionary).

If you need any help or advice on protecting your medicinal cannabis brand, please contact us.