Trademark for a legalised drug – international conference discusses hot topics in the IP industry


January 3, 2020

The AI revolution is still waiting for its full coming, and how to grant a trademark for a fragrance or a previously illegal drug? Kolster’s Associate Partner Joose Kilpimaa learned about IPR trends generating global debate at an event of the largest organisation in the IP industry, INTA. 

Registration of cannabis products as trademarks, developments in the registration of non-traditional trademarks and the delay in the artificial intelligence, or AI, revolution. These are currently hot topics among IP industry influencers all around the world.

They also emerged as the most interesting themes at the Leadership Meeting event in Austin, Texas. It was organised by the largest organisation in the IP industry, INTA (International Trademark Association). Kolster’s Associate Partner Joose Kilpimaa was the only Finn among the 1,200 international participants attending the event this year.

INTA Annual Meeting 2019: New innovations for using trademarks!

“With legal cannabis products, the only limit is your imagination”

The legalisation of cannabis is advancing at a fast rate: in North America, 12 states have already decriminalised its recreational use. As with other innovations, the only limit to the development of cannabis products is your imagination. 

“The legal cannabis market in America is not old school smoking. Smoking is declining as the substance is being consumed in completely new forms as edible and drinkable products. Breweries are the most aggressive of operators”, Kilpimaa says. 

According to him, the new challenge is applying for trademark protection for products that were previously – and elsewhere are still – illegal. Of the countries in the European Union, Luxembourg has been the first to announce that it will decriminalise the recreational use of cannabis in about five years.

“This is a phenomenon that may seem distant. However, someone will be the first to open the gate, and the situation may then progress very quickly”, Kilpimaa notes.

“Brexit and Africa are trending in the IPR world”

In addition to cannabis, another topic of much discussion in the IPR world is still Brexit. 

“Nothing is known for certain about the impact of Brexit on the IP sector, as every theoretical frameworks that has been outlined ultimately depends on whether or not Great Britain can reach a deal with the EU. In addition, the content of the constant updates from the UK trademark office changes depending on whether or not Brexit is happening and, if it is, whether it is taking place with or without a deal”, Kilpimaa says.

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Africa, too, is now on the lips of many, and expectations for the continent are high.

“There have been murmurs for a long time about how intellectual property issues will yet emerge in Africa, but it is unlikely to become the next China. The breakthrough, however, is still keeping everyone waiting”, Kilpimaa notes.

“Registering a fragrance as a trademark is poetry”

The world of trademarks is becoming more internationally harmonised, but a particular phenomenon of the future relates to the registration of non-traditional trademarks. In Finland, the Trademarks Act was revised in May 2019, when the requirement for graphical representativeness was removed. 

The processes related to non-traditional trademarks are still taking shape, but are already spreading around the world. Challenges do not mean that non-traditional trademarks are not worth seeking.

“With careful preparation, it is possible to obtain a non-traditional trademark registration and thus new ways of differentiating yourself from competitors. However, this is definitely something that you should hire a professional for”, Kilpimaa notes.

According to him, the gates are now open for completely new kinds of trademark registrations. “You can apply for a trademark for holograms, moving images, sounds or colours. For example, Fiskars has exclusive rights to a certain orange and Fazer to a certain blue shade”, Kilpimaa says.

The new Finnish Trademarks Act became effective on 1 May 2019 ─ classifications must be revised retroactively

Limitations are now mainly related to the technical capacities of trademark offices, as their databases are public and anyone must be able to browse them. If the office is unable to present, for example, a hologram in its database, it will not be possible to seek its inclusion in the register.

Scents or flavours are at least not yet accepted into the trademark register in the European Union, but even that is possible in the US.

“The scent of the toy company Hasbro’s PLAY DOH modelling clay has been registered. As regards fragrance, a great deal of proof is required that the scent has always been the same and that people recognise it. The fragrance must also be defined verbally, which is almost poetry”, Kilpimaa says. 

For non-traditional trademarks, the object of the protection sought must be clarified more clearly than before. The descriptive part of the application carries a high risk of errors, which may lead to the application being rejected or the object of protection being different from what was originally intended.

“An exclusive right to a sign or multimedia file containing moving images targets not the word bouncing inside the frame, but the trajectory of that word. It is very precise. For example, Red Bull attempted to register the blue and silver colour combination of its cans without specifying accurately enough how the colours are used in relation to each other. The application was rejected by the EU supreme court.”

“No AI revolution after all”

People will still need to wait for the AI revolution in the IP industry. Expectations are high because AI solutions can deliver significant resource savings for both companies and customers. AI-based applications are constantly evolving, but they are helpful mainly in situations that require processing large amounts of data. 

“In patenting, AI already provides assistance in translating applications, and on the trademark side, it is possible to use software to compare patterns and examine their similarity. For the time being, however, AI is just a desired and facilitating tool producing information that people process into something useful”, Kilpimaa says.

At the event, even the virtual technology pioneer, the SXSW festival, commented that face-to-face meetings between people are still at the heart of everything.

“It was surprising to hear that there are no huge technological leaps in sight, despite the constant talk about artificial intelligence. Even the representatives of AI companies did not boast about revolutions. Progress is being made, but in small steps.”

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Joose Kilpimaa
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