Three Years of Legalization – Trends in the Cannabis IP Space in Canada Written by: Dr. Angela Kueling and Rhiannon Adams October 17, 2021 marks the third anniversary of recreational cannabis legalization in Canada. The growth of the cannabis industry over the past three years has led to the creation and protection of new intellectual property (IP) in a variety of areas. Parlee McLaws has assisted clients to secure cannabis-related IP. In this article, we’ll summarize some of the developments and trends that we’ve observed. Trademarks Branding has played a key role in the cannabis industry with companies looking to stand out from their competitors and establish goodwill with consumers. The number of trademark applications in this space has therefore increased dramatically. One helpful development over the past year has been the expansion of the number of cannabis-related goods and services listed in the Canadian Trademark Office’s Goods and Services Manual and the recognition of the importance of terminology used in the industry (e.g. cannabis versus cannabinoids). There are currently over 300 goods in the Manual that mention cannabis, a number of which were suggestions submitted to the Trademark Office by Parlee McLaws on behalf of clients. In addition to increased trademark filings, there has also been an increase in cannabis-related trademark litigation. Interestingly, there have been two cases recently that dealt “punny” cannabis trademarks: “HERBS R US” (a play on “TOYS R US”) and “BUDWAY” (a play on “SUBWAY”). In both cases, the court found in favor of the original trademark owners and ordered the cannabis companies to cease use of their marks. These cases highlight the importance of selecting a strong and appropriate trademark that won’t cause you issues in the future. Patents and Industrial Designs With the legalization of recreational cannabis came the introduction of a variety of new products to the marketplace. Companies are filing new patent and industrial design applications not only on new cannabis products but also accessories for consuming cannabis, such as pipes, vaporizers, and more. In addition, the scale-up of cannabis production at the commercial level, as well as the ability for consumers to grow their own cannabis plants at home, has led to increased filings for plant growth products such as greenhouse technologies, grow boxes, indoor lighting fixtures, etc. As some of these patent applications start to be examined, one of the interesting trends has been the type of prior art cited by patent examiners in the cannabis space compared to other areas. Typically, examiners cite other patents, patent applications, or scientific articles when making novelty or obviousness objections. However, as few of these more formal prior art documents are available for cannabis (at least pre-2019), we see examiners citing more informal prior art like websites, blog posts, online forums, and social media pages. As a result, patentability searches in the cannabis space should use a broader scope than just traditional sources like patent databases. Plant Breeders’ Rights In addition to new cannabis products, a number of companies have started to develop new cannabis varieties with desirable traits such as a preferred cannabinoid profile. Plant Breeders’ Rights (PBR) is a form of IP that can be used to protect new plant varieties and gives the PBR holder exclusive rights over the variety’s propagating material. There are currently nine PBR applications pending at the PBR Office in Canada for cannabis varieties. See our previous article HERE for more information on how to apply for PBR. Licensing The cannabis industry includes everything from small startups to large multinational corporations, and there are many opportunities for companies in-license or out-license existing cannabis-related IP. Everything from trademarks, patents, and industrial designs to Plant Breeders’ Rights can be licensed in a number of ways. For example, the vegetative rights for cannabis varieties can be licensed to allow others to grow and harvest cannabis plants in exchange for a set fee or royalty to the variety owner. Summary The recreational cannabis industry has become an important part of the Canadian economy over the last two years and it provides both opportunities and challenges with regards to IP in Canada. In addition, as other jurisdictions have varying cannabis restrictions, developing an international IP strategy can be complex. Parlee McLaws has experience working with clients in the cannabis space and we have connections with other firms worldwide to help you coordinate your IP protection and enforcement. If you are interested in exploring cannabis-related IP rights, please contact our Intellectual Property team for assistance.