Growing Pains: The Emerging Role Of IP In Selling Canadian Cannabis

Licensed producers and others looking to enter Canada's medical or recreational cannabis industry should be thinking about how they will distinguish their business, products and services from others, in what will undoubtedly become a crowded and competitive marketplace. Intellectual property protection available under Canadian and foreign laws should be an important part of that strategy.

In Canada, licensed producers hoping to sell cannabis for recreational use should register trademarks for their company name and key sub brands. Trademarks can be registered for a wide range of trading indicia, including words, logos, colours, sounds, shapes of goods or packaging will expand to include holograms, scents, tastes and textures in 2019.

The Canadian Intellectual Property Office will register trademarks for cannabis products, unlike in the U.S. where trademarks for products which are unlawful under U.S. federal legislation, such as the Controlled Substances Act and the Food, Drug & Cosmetic Act, are not registrable. Companies offering analysis and testing services for cannabis products can also create and register certification marks that they license to others whose goods and services meet a defined standard.

This registration is generally available in U.S. states where either medical or recreational cannabis is legal. Licensed producers and manufacturers of accessories, and edibles and topicals once they become legal, can also use the patent system to protect novel processes (such as extraction), product functionality and product formulations.

Plant breeders' rights protections are an interesting option for those creating new strains of cannabis. They are a form of intellectual property rights by which plant breeders can protect new, distinct and stable plant varieties for up to 20 or 25 years depending on the type of plant. There has been at least one application to the Canadian Food Inspection Agency for plant breeders' rights for a Cannabis Sativa strain called "Big C."

Any business offering a product or packaging with a unique shape, pattern or other ornamentation that does not serve a utilitarian function, can obtain industrial design protection for those features for up to 10 years. Copyright, which may be registered or unregistered, is available to prevent the unauthorized copying of original literary and artistic materials, including manuals, packaging and aspects of websites.

Regulatory challenges

However, the cannabis industry is...

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