The Gatherer - Volume 8

OneMusic brings one-stop music licensing to Australia (Except for cheese-makers?)

INTERACTION WITH TRADE MARK LAW

United Kingdom has a general blanket ban on trade mark registrations for cannabis and cannabis related products as they view it as being associated with illegal drugs. In the EU there is no harmonised law on cannabis, including its trade marking, with the responsibility resting on each EU member state, although they are bound by their obligations under various United Nations drug control treaties. The Thai Trademark Act regulates what trade marks are registrable in Thailand and appears to concentrate more on whether the applied for trade mark implies association with the King, the Royal Family or any governmental and ministerial departments. It includes a single clause prohibiting ‘any mark which is contrary to public order, morality or public policy’. There currently appears to be only one registered cannabis trade mark in 2002 with 3 more filed in late 2018-early 2019 awaiting acceptance, suggesting cannabis trade marks are still highly scrutinized. Recent amendments to the Narcotics Drug Act legalising the cultivation, production and use of cannabis for medical related purposes in Australia, has paved the way for trade marks covering medicinal- cannabis products to be registered in Australia. A similar progressive process is happening around the globe, with many major nations also legalizing medicinal cannabis and having the same flow-on effects in their trade mark legislation. However, what is capable of being trade marked is still limited by the legal restrictions placed on medicinal cannabis related products in each country. Thus, businesses entering this industry should obtain independent trade mark advice prior to embarking on the trade mark registration process. If you have any questions in relation to this topic please contact a member of our specialist team at Wrays. MOVING FORWARD

Australian trade mark law stipulates that a trade mark cannot be registered if it contains ‘scandalous matter’ or if the use of which would be contrary to the law. As the promotion, production and sale of cannabis on any basis was previously illegal, any trade mark for cannabis including medical cannabis would be subject to such scrutiny, thereby allowing the Australian Trade Marks Office space to object. Additionally, registrations for such trade marks would also be vulnerable to opposition/ cancellation by third parties on the basis that there could be lawful use of the trade mark in Australia. The recent amendments to the Narcotics Act means that the previous basis for objecting to such trade marks has eroded. However, the limits of the amendments must be considered when determining what is and is not capable of being trade marked. In all states, any production, cultivation or use of cannabis in any capacity other than medical is still illegal, and thus any trade mark for a business that operates in that sense is still contrary to the law. In the USA, the United States Patent and Trademark Office have repeatedly refused to grant registration to cannabis related trade marks as the use of cannabis marks for cannabis products or services is prohibited by the Control of Substances Act and therefore cannot be lawfully used in commerce. State trade mark registrations may be available, although they do not offer the same protection as a federal registration. Federal trade mark registrations may also be available for ancillary goods and services which are indirectly related to cannabis. So services that, for example, provide a marketing platform or are purely informational may be registrable at a federal level. In Canada, regulations were published on 11 July 2018 placing restrictions on marks for cannabis products that may appeal to children or marks that glamorise it. Although Canada has opened the door to trade mark registration for cannabis products, care is still required in the selection and filing of trade marks since the government has clearly signalled that it does intend to control all aspects of promotion and sale of legalised cannabis products. The UK Trade Marks Act stipulates that a trade mark will not be registered if it is contrary to public policy/accepted principles of morality or its use is prohibited by any enactment or law. The Intellectual Property Office of the

O n 1 July 2019,

The initiative is called OneMusic, and it brings together in one bundle licences of all of the copyright works in each of the PPCA, APRA and AMCOS catalogues. Think musical works, sound recordings, music videos and the like. Previously, PPCA would issue licences of things like sound recordings and music videos, and APRA AMCOS would do the same for music and lyric copyrights, and businesses who wished to use these works would need to obtain separate licences from each of those organisations. This initiative seeks to cut administration time and increase uptake of music licences. A similar initiative has been operating in NZ for about 6 years and the Australian version will hopefully benefit from the lessons learned in making that initiative the success it is today.

The new licences are presented in a user friendly portal on the OneMusic webpage, from which licensing enquiry forms can be obtained and in some cases be submitted online. The licences on the portal aim to cover most types of business-related music copyright licence needs. Curiously, although OneMusic trumpets the ability of music to affect the flavour of cheese, with hip hop music imparting a stronger, fruitier taste, there are no cheese-making licences on the portal. This begs the question – if a beat drops in a forest (of cheese) and no-one (except the cheese) hears it, does it need a licence? One presumes the answer is yes, but time will tell whether it gets its own category at OneMusic.

APRA, AMCOS and

PPCA launched a joint initiative in Australia aimed at making music licensing

easier and simpler to access for Australian businesses.

TIM FRANCIS Principal

JENNIFER MCEWAN Principal

6|The Gatherer

www.wrays.com.au | 7