Getting ready for the legalisation of cannabis in New Zealand … maybe …

In October the New Zealand public will be going to the polls. As well as voting in the national election we will be asked to vote on two referendums. One of those referendums - the one about the legalisation of cannabis - has IP implications.

Obvious IP considerations relate to the use and registration of trade marks for cannabis products. Other possibilities are the registration of Plant Variety Rights (PVR) and Geographic Indications (GI) and the grant of patents.

The proposed Cannabis Legalisation and Control Bill (the Bill) will legalise the recreational use of cannabis - any plant of the genus Cannabis - and sets out a way for the Government to control and regulate the production and use of cannabis, cannabis products and cannabis accessories. The Bill covers how people can produce, supply and consume cannabis for recreational purposes. It does not cover medicinal cannabis, hemp, driving while impaired, or workplace health and safety issues which are covered by existing laws.

The Bill would allow people to grow, possess, purchase and consume cannabis in limited circumstances. As well as being able to consume cannabis on private property the Bill sets up a regime for licensed premises from which cannabis can be sold and/or consumed.

Consumption premises will be established to provide lawful places to consume cannabis outside the home. A consumption premise may be BYO (bring your own) consumption premises or a combined retail and consumption premise. The cannabis product may be in the form of parts of the plant, concentrates, edibles and extracts as defined in the Bill. Consumption premises would be required to provide conventional food and drink. They would not be able to sell alcohol or tobacco. Smoking or vaping cannabis indoors at consumption premises would be prohibited.

Trade marks

Under the Bill the term "trade mark" is defined to include any trade mark whether or not it is registered or registrable under the Trade Marks Act 2002. The definition includes brand names, company names (where that name is used for advertising or promotional purposes) and any name, word, or mark that so resembles any trade mark that it is likely to be taken as, or confused with, that trade mark.

While setting up a permissive environment for the consumption and sale of cannabis products, the Bill provides for a number of restrictions on the use of cannabis product trade marks. Such trade marks cannot be used on any non-cannabis article or for the purpose of advertising any activity, event; scholarship, fellowship, or other educational benefit. The Bill also prohibits the distribution and sale of any non-cannabis article that bears a trade mark of a cannabis product that is sold in New Zealand. Conversely, there is a prohibition on use of non-cannabis trade marks on cannabis products or accessories.

Section 17(1) of the Trade Marks Act 2002 states that the Commissioner must not register a trade mark or part of a trade mark any matter the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court. Notwithstanding this provision it is currently possible to register a trade mark for cannabis products under the Trade Marks Act, even though the sale of cannabis products is not legal. There are already a number of registrations covering a range of cannabis goods and services including supplements, food and beverage products containing cannabis, live plants and dried plant material as well as the retailing and wholesaling of cannabis.

If the referendum and Bill are passed this provision of the Trade Marks Act will no longer be relevant to the registration of cannabis trade marks for cannabis products but will potentially be relevant to the registration of cannabis trade marks for non-cannabis products. It would not be surprising if a further proviso was added to section 17 to mirror that already in place for tobacco products for which similar restrictions on use for non-tobacco goods exist under the Smoke-Free Environments Act 1990. In such a case, the proviso would allow the registration of a trade mark even if use of the trade mark is restricted or prohibited under the Cannabis Legalisation and Control Act.

The Bill sets up a regime for product labelling and advertising similar to that in place for tobacco products (under the Smoke-Free Environments Act). It is intended that packaging requirements that discourage cannabis consumption, such as plain packaging and health warnings will be developed.

Cannabis product labels would show:

  • the amount of THC (tetrahydrocannabinol - the main psychoactive compound in cannabis);
  • the amount of CBD (cannabidiol - a non-psychoactive compound); and
  • how the product compares to the daily purchase limit.

Plant Variety Rights

Plant variety rights (PVRs) are presently available for varieties of any kind of plant other than algae and bacteria. The word "variety" is used not in the sense of a "botanical variety", but rather as being synonymous with "cultivar" or "cultivated variety".

Subject to meeting the criteria of being new, distinct, homogeneous, and stable it would be possible to protect a variety of cannabis under the Plant Variety Rights Act 1987. This Act does not include any contrary to law or morality provisions.

We note that the Plant Variety Rights Act is currently under review. It does not appear that any amendments are necessary to protect varieties of cannabis as PVRs. There is currently a small number of PVR applications for cannabis under examination by IPONZ.

Patents

The current patents regime under the Patents Act 2013 does not prohibit the grant of patents for cannabis products or processes for making such products.

While the Patents Act excludes inventions for which commercial exploitation would be contrary to public order or morality, this is subject to the proviso that "commercial exploitation must not be regarded as contrary to public order or morality only because it is prohibited by any law in force in New Zealand". There are a number of patents and applications relating to the extraction of components from cannabis plants and the use of such components in the manufacture of products.

Geographical Indications

A geographical indication (GI) is a sign used on products that come from a particular geographical location and which possess a quality, reputation or other characteristic linked to that location.

At this time, GIs can be registered in New Zealand for local and international wines and spirits only under the Geographical Indications (wines and spirits) Act 2006. However, this may change depending on the outcome of New Zealand's negotiation of a Free Trade Agreement with the EU. The EU has an extensive regime that includes systems for the registration and protection of GIs for foodstuffs, wines and spirits and in its FTAs the EU seeks obligations from the New Zealand government to protect EU GIs.

If the scope of New Zealand's legislation regarding the protection of GIs is expanded to include foodstuffs this may allow for the protection of GIs for cannabis products. There are definitely parts of New Zealand that are better suited to, or have a reputation for, growing cannabis!

The 2020 General Election is being held on 17 October 2020 and once the votes are counted the incoming government will have heard the public's view on whether the recreational use of cannabis will be legalised.

Elena Szentivanyi - September 2020

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