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Intoxicating IP Part 2: Cannabis

Originally published in AdvocateDaily.com

In Part 2 of the of our mini-series on IP issues for companies selling “sin” products Toronto intellectual property lawyer John Simpson explores Canada’s emerging cannabis sector.

Brand owners who want to make a mark in Canada’s recreational marijuana industry face unique challenges obtaining and protecting trademarks ahead of the drug’s official legalization, Toronto intellectual property lawyer John Simpson tells AdvocateDaily.com.

Simpson, principal of IP and new media law boutique Shift Law, says the federal government’s Cannabis Act, introduced earlier this year, contains a number of new trademark provisions that rights holders in more traditional businesses don’t have to worry about.

“It’s going to be interesting to see how it all plays out since the law is not in force and there are a number of unanswered questions,” Simpson says.

Although the date of legalization has already been set for July 1, 2018, the Act is still only part way through the legislative process, currently awaiting review by the Senate. Industry players are also still waiting on regulations that will help flesh out some of the hazier definitions in the law.

For example, the new law would ban the sale of cannabis or related accessories with “an appearance, shape or other sensory attribute or a function” that could appeal to young people, potentially limiting the use of materials that would otherwise pass muster under the Trademarks Act when used in conjunction with other products.

“Child-friendly designs and characters are likely to cause issues,” Simpson says.

Despite all the uncertainty, Simpson says he’s enjoying the challenge of advising new players in the space.

“They’re fun clients to have in an exciting space where branding is very important,” he says.

By its nature, the legal marijuana business is start-up heavy, Simpson says. However, that hasn’t prevented legal battles over IP.

Last year, Vancouver-based mail order dispensary Air Cannabis, shut down its website after the Halifax Chronicle Herald newspaper pointed out the similarities between its logo and that of the nation's largest air carrier, Air Canada.

Rapper Snoop Dogg also had problems getting his own brand of marijuana, “Leafs By Snoop,” up and running south of the border, when the Toronto Maple Leafs lodged an opposition with the U.S. Trademark and Patent Office. Their objection relates to a logo that displays the rapper's brand name over a leafed plant reminiscent of the hockey team's throwback badge, according to a TSN report.

Simpson says many businesses in the area may want to take advantage of provisions in the Trademarks Act that allow companies to register a “proposed trademark,” giving themselves more time to establish use of the mark in Canada.

“Because it’s a newly legalized industry, they’ll probably be applying before they can actually use some of the catchy slogans and cool brands they have developed to market their products,” he explains.

Applicants should also try to think ahead about what other potential uses they may have for a trademark, outside the scope of the core business.

“There are many ancillary services and accessories that go with cannabis,” he says. “If they’re operating retail stores or dispensaries, there are all kinds of other fun gear that could be included.”

For part 1, in which Simpson tackled IP issues for the burgeoning microbrewery industry, click here.

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