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On 15 June 2022 the Lisbon Court of Appeal confirmed the decision of the 1st chamber of the Intellectual Property Court (IPC), in a case where the similarity between tobacco goods and cannabis for medicinal purposes was discussed.

Facts

Aphria Inc., a Canadian producer and distributor of medicinal and recreational cannabis, applied for the registration in Portugal of the word mark MOHAWK for a range of cannabis related goods in class 5 namely:

oils, salves, concentrated pastes, tinctures, tablets and capsules, all containing cannabis; nutraceuticals for medicinal purposes containing cannabis; topical skin creams, bar soaps and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face milk and body, face lotion and skin care preparations, all containing cannabis derivatives; all the above mentioned products are intended for pain relief, relaxation, reducing stress and fatigue, improving mood, maintaining general health and well-being, relieving anxiety, relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabis; oral sprays containing cannabis.

Gre Grand River Enterprises Deutschland GmbH, opposed the applied mark claiming risk of confusion with its prior European Union Trademark also MOHAWK for tobacco related goods in class 34.

The Portuguese TM Office found no similarity between the goods. Consequently the opposition was rejected and the registration was granted to Aphria Inc..

Appeals

The opponent appealed to the IP Court which partially upheld the appeal.

The 1st instance judge made a distinction: nutraceuticals, and skin or body care products, containing cannabis, or sexual lubricants, are all different from tobacco products; however oils, salves, concentrated pastes, tinctures, tablets and capsules, all containing cannabis, transdermal patches containing cannabis; oral sprays containing cannabis have some degree of similarity with tobacco products or tobacco substitutes

The judge noted that, in both cases, in the case of products with inebriating properties and/or hallucinogenic effects to consumers which partly coincide as meeting similar needs (e.g. stress relaxation or simply satisfaction of an addiction) and can be acquired and consumed together.

The low degree of similarity between the goods is deemed to be offset by the identity between the marks (according to the interdependence principle in Canon), therefore the Court partially refused the registration for the mentioned goods.

Both parties appealed to the Lisbon Court of Appeal concerning the unfavorable part of the 1st instance decision.

The Court rejected the appeals and confirmed the IP Court decision. In particular the Court noted that the production and consumption of cannabis related goods has been liberalized in several countries mentioning also that in the public perception there is an increasing connection between tobacco and cannabis or derived products.

For more information or any question: sgcr@sgcr.pt.

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Simões, Garcia, Corte-Real & Associados is based in Lisbon.
Rua Castilho, 167, 2º
1070-050 Lisboa
Portugal

T: +351 217 801 963
E: sgcr@sgcr.pt