By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright

The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad.

Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.”

With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use.

The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in force, the Act will allow cannabis businesses to register, among other things, scents, colours, tastes, and textures as parts of their trademarks. In order to register these non-traditional marks, applicants will be required to demonstrate that their product has acquired a ‘distinct’ quality in one of the sought-out categories.

The Canadian government also provides Canadian cannabis businesses the opportunity to monopolize plant strains. Canada’s Plant Breeders’ Rights Act (the PBRA) permits cannabis businesses to register new varieties of cannabis. Once registered, the PBRA gives these varieties significant protections. For instance, the PBRA gives the holder of the plant breeder’s rights respecting a plant variety the exclusive right to:

• produce and reproduce propagating material of the variety;
• condition propagating material of the variety for the purposes of propagating the variety; and
• sell propagating material of the variety.

In addition to their inherent value, these rights are granted for a significant period of time: 25 years if they fall under one of the categories specified in the PBRA, and 20 years otherwise. More importantly, every person who is designating the variety for the purposes of the sale of propagating material of the variety has to use this denomination, even after the expiry of the term of the grant of those rights. In other words, cannabis businesses that are the first to register a particular cannabis strain will essentially get the recognition for the name of that particular strain in perpetuity. This can have long-lasting benefits because a plant variety will likely continue to be associated with that cannabis business’ products even after the term of the grant. However, the owner of the variety should register and use a different trademark when promoting the variety because the owner does not get the exclusive right to the strain’s name under the PBRA.

With the cannabis industry quickly expanding in Canada, the easily obtainable Canadian trademark and plant breeder’s rights may become more difficult to secure as applications for registration increase.

Chris Hunter practices out of Norton Rose Fulbright’s office in Toronto, Canada and represents clients in the acquisition, enforcement and exploitation of all forms of intellectual property, including patents, trade-marks, copyrights, industrial designs and trade secrets.