MEDICINAL CANNABIS – Foreign applicants blaze to the IP Office to secure trademark registration. All puns intended.

Contributor: Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador

INTA Bulletins Law & Practice—Latin America Subcommittee

Verifier: Santiago Cevallos Mena, General Director – Ecuadorian Service for Intellectual Property (SENADI)

The Ecuadorian Legislature passed a bill on September 23, 2019, decriminalizing the use of marijuana for medical and therapeutic purposes. The bill is part of an amendment to Ecuador’s Integral Criminal Code (COIP), it allows the possession of products containing or derived from cannabis for therapeutic, palliative, medicinal or alternative medicine uses. The bill further permits the cultivation, production, harvest, trade, distribution, and use or research prior to a written governmental approval.

While the bill should still be sent for a presidential veto, the trip at the IP Office started as early as January 8, 2019. Five Canadian companies (two of which are now joint) blazed to file 36 applications to register marks containing references to “marijuana” or “cannabis” for the first time at the Intellectual Property Register.

Article 134 of Andean Decision 486 states that: “the nature of the product or service to which the mark is applied will not be an obstacle for registration.” It appears that there was no anxiety in relation to the products or services. So far, 12 of the marks have been allowed and 8 of these already count with registration certificates. As shown in the chart, it appears that most of the applications have followed a straightforward procedure, except two that have oppositions where likely a higher Authority will need to issue a decision.

The applications were filed mostly in International class 5 and the descriptions have been as clear and limited as “medical cannabis, medicinal marijuana.” However, there are also applications in class 31 to protect “live plants, seeds”, and service marks in classes 35, 36, 41 and 42 to protect retail and wholesale of cannabis products, investments in the drug-related industries, and for education and research in the field of medicinal marijuana.

Source: Published Intellectual Property Gazettes.

It was no surprise that foreign companies seek protection of their marks considering that Ecuador is located in latitude 0°, where the direct sunlight, long days throughout the year, and optimal weather and agricultural conditions create a perfect environment for the cultivation of high-quality products such as cocoa, flowers, fruits, vegetables and of course… weeds. The passing of this bill will be a breakthrough in the country where illegal drug production is one of the main challenges.

“An edited version of this piece was originally published in the INTA Bulletin of the International Trademark Association (INTA).”

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