Law & Practice

BRAZIL: IP Office Reviews Its Position on ‘Hemp’ Trademarks

Published: September 9, 2020

Pinheiro Palmer

Cristina Pinheiro Palmer Pinheiro Palmer Advogados Rio de Janeiro, Brazil Trademark Office Practices—Latin America TMOs Subcommittee

Verifier

Marcelo de Oliveira Muller Ouro Preto Advogados Rio de Janeiro, Brazil Trademark Office Practices—Madrid System Subcommittee

The recent challenge to a decision denying registration of a trademark using the word “hemp” in Brazil led to a change in policy allowing such marks.

MetaCan, Inc., now HempFusion, Inc., filed original application No. 912450959 on March 20, 2017, in Brazil for HEMPFUSION in International Class 5, for a range of dietetic and nutritional supplements. According to its website, the company specializes in full spectrum cannabidiol hemp extract products.

The application was not opposed by third parties but was ultimately rejected by the Brazilian National Institute of Industrial Property (INPI) on August 21, 2018, based on a controversial provision of the Brazilian IP Law, under which trademark registration may not be granted to “an expression, representation, drawing or any other sign that is contrary to morality and good conduct.”

At that time, the examiner concluded that the trademark was contrary to accepted principles of morality due to inclusion of the word “hemp.”

The applicant filed an appeal against the refusal in September 2018, arguing that the examiner was not fully aware of the difference between “hemp” and “marijuana,” notably the difference in the level of tetrahydrocannabinol (THC). Hemp has very low levels of THC, which has been ascribed many therapeutic purposes, including as an anti-inflammatory and anti-allergy treatment, and as a treatment for multiple sclerosis and Tourette’s syndrome.

The applicant further argued in its appeal that since May 2015, the Brazilian National Agency for Sanitary Surveillance (ANVISA), which is responsible for food and drug approval, has been allowing the importation of cannabidiol-based products, according to Resolution No. 17/2015. The first of such products, named “Mevatyl” or “Sativex,” had already been sold in multiple countries and the mark was registered in Brazil in 2017.

Moreover, ANVISA had expressly allowed the importation of many foreign products with brand names including “hemp,” such as Cibdex Hemp CBD Complex, Hemp Blend, Endoca Hemp Oil, and Revivid Hemp. Therefore, it was argued, it was inconsistent for INPI to reject the application for HEMPFUSION.

MetaCan’s strategy was successful and INPI reviewed its position on “hemp” trademarks when the appeal was examined. On April 14, 2020, the rejection decision was overturned and on May 5, 2020, application No. 912450959 proceeded to registration.

This decision is relevant because it clearly establishes INPI’s position on “hemp” trademarks, which are allowed to be registered, provided that they (1) do not identify products that are still illegal in Brazil; and (2) as a whole, are not similar to previously registered marks.

 

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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