A trade mark shall not be registered, or if registered is liable to be removed from the register, if such mark is:

• inherently deceptive or likely to deceive or cause confusion;
• contrary to law;
• contra bonos mores; or
• likely to give offence to any class of persons.

Here we offer insight into the above “contrary to law” provision, particularly insofar as it relates to the controversial discussion regarding the partial legalization of cannabis in South Africa, and its effects on trade mark law in South Africa.

The infamous 2018 Constitutional Court judgement surrounding the legalisation of cannabis in South Africa held (in summary) that use or possession of cannabis in private, or cultivation of cannabis in a private place, for personal consumption in private is no longer a criminal offence.

How does this ruling affect trade mark law in South Africa? One may automatically assume that trade marks that incorporate or make direct or indirect reference to cannabis are now capable of registration. However, the answer is not as straightforward as it appears.

Although the Office of the Registrar of Trade Marks, appears, in its Guidelines on the Examination of Trade Mark Applications[1] to concede that the above ruling has the effect that any mark including a word, symbol, phrase, letters or image related to cannabis shall no longer be deemed contrary to law – this concession is met with the following provisos:

• on condition that the mark meets the overall threshold of trade mark registration; and
• that the application will proceed through to registration subject to the Applicant undertaking that the goods / services offered under such mark comply with the parameters set by the Minister of Health as published in the Government Gazette from time to time.

Therefore, an application to register a trade mark that features the word ‘cannabis’, or an element reasonably understood as a reference to cannabis, could still be refused on the basis that it does not satisfy the provisions of Sections 9 and 10 of the Trade Marks Act, 194 of 1993, or that the use of the proposed goods falls foul of the requirements prescribed by the Minister of Health.

In addition, likely future regulatory restrictions (similar to those imposed on the tobacco industry), advertising, food labelling regulations as well as plant breeders’ rights, would on promulgation need to be taken into consideration when venturing into the cannabis industry and seeking to acquire trade mark rights in connection with such a venture.

A wise trade mark applicant will obtain legal advice pertinent to the specific business venture that is being embarked upon before making hasty decisions in regard to the trade marks that are sought to be adopted.