Navigating the green wave: an IP perspective on the cannabis industry

Fabrizio Miazzetto

Introduction

I recently attended the crowded Spannabis 2024 cannabis fair in Barcelona and, as a lawyer, I noticed a great deal of anticipation and, at the same time, concern about the regulatory aspects of the business. But what about intellectual property? Having dedicated my professional life to IP law, I can’t really be objective on the subject, but it still surprises me how ordinary businesses don’t seem to have a clue about it. Indeed, it helps not to worry about anything you don’t know but, at the same time, an absolute lack of knowledge on the subject can blind us to potential opportunities.

My humble opinion is that while the cannabis industry continues to grow globally, the intersection of intellectual property law and cannabis regulation presents both unique opportunities and challenges. Let’s look at some data.

The “green wave” in cannabis related innovation has led to an increase in patent filings, particularly in the United States, despite the plant falls into Schedule I under federal law (source: cannabisnow.com). These patents cover a wide range of innovations, including cultivation techniques, strain development, extraction processes, medical applications, etc..

In Europe, the IP landscape related to cannabis based products and related inventions is also evolving, even if at a different pace. Legal and regulatory differences across the EU area has led to a more cautious approach to patenting, mainly focusing on medical cannabis and CBD products. The European Union’s complex attitude regarding novel foods and CBD further complicates things for innovators seeking to protect their products in the EU market. (source: prohibitionpartners.com).

Market Forecasts and Trends

The cannabis industry has experienced significant growth, driven by the medical and recreational sectors.

In the U.S., legal cannabis sales are on the rise, with medical cannabis sales expected to reach $15.6 billion by 2026 (source: stash.com). Europe’s medical cannabis market is also expanding, with sales expected to go beyond €550 million by the end of the year, led by UK and German companies (source: prohibitionpartners.com).

This growth has been accompanied by an increasing focus on cannabinoids other than THC and CBD and the development of new delivery systems and devices for cannabis-based medicines. EU industry seems shifting toward a more specialized and consumer-oriented products (source: labmanager.com).

Spain's unique position in the cannabis market

Spain’s emerging cannabis market is characterized by a vibrant community of activists and entrepreneurs who have advocated and pushed institutions for constructive cannabis regulations.

According to the recently released CannaMonitor’s Spanish Cannabis Market Report 2024, available at cannamonitor.com, the country’s cannabis industry is supported by specialized consulting and engineering firms. Spain’s potential as a leader in the European cannabis market is also supported by a favorable climate for this kind of cultivation, by centuries of agricultural experience and strategic geographic position, making it the perfect hub for cannabis production and research.

Driven by the demand of the medical industry, Spanish companies have experienced significant investments, particularly in cultivation facilities in the south of the country, and these companies have obtained important revenues, mainly from the export of dried flowers.

Current forecasts indicate that the expected legalization of medical cannabis is expected to benefit millions of patients and could generate significant sales by 2030. However, concerns that projected regulations may be too restrictive in terms of prescription and product offerings is still shadowing the business panorama.

The CBD market in Spain has also experienced a huge boost and it now includes more than 260 players which have invested in the development of distribution channels and generated high revenues through specialized stores and online platforms.

The cannabis agribusiness sector, which includes more than 120 brands operating in the country and internationally, is now investing significantly in genetics and distribution, contributing to sales through specialized physical and online channels.

Summing-up, Spain’s cannabis market, while still fighting against regulatory complexities, shows a bright future with tons of opportunities (source: Cannamonitor 2024).

Legal Challenges

In the United States, the cannabis industry has to deal with complex legal framework in which single states laws allow medical and recreational use while these are in conflict with federal law, which classifies cannabis as a Schedule I substance under the Controlled Substances Act.

This situation coexists with the U.S. Patent and Trademark Office’s practice to grant patents on cannabis-related innovation while burdening these products from receiving trademark protection (source: cannabisnow.com).

To the contrary, Europe presents a non-harmonized legal environment, with each member state regulating autonomously (or not regulating at all) the cannabis related issues, resulting in different legal statuses across the continent. This is also true when it comes to CBD products. This adds additional obstacles to innovation concerning a substance that is increasingly recognized for its therapeutic potential. (Source: prohibitionpartners.com).

The situation in Spain is even more singular in the European context. While the country has not legalized cannabis, it has a pushing cannabis club culture, also thanks to legal loopholes in this respect. These clubs function on an associative basis, providing the product to members without directly infringing Spain’s laws against public consumption and trafficking. However, in Spain the lack of a clear legal framework, combined with an ambiguous attitude towards cultivation and sale, emphasizes the legal challenges that the cannabis industry faces in Spain.

The ongoing debate and proposals to regulate the use of cannabis, especially in the medical sector, suggests that a more formalized and legally recognized cannabis industry in the country will soon see the light. This will certainly be needed to support the innovation in this pushing market.

IP and The Path Forward

In this complex legal environment, strategic IP management is not only beneficial, but it’s a necessity for innovating companies aiming to differentiate themselves and protect their products. The increasing social acceptance of cannabis prepares the market for growth. The importance of securing strong IP rights to protect cannabis brands and related innovations is of the utmost importance.

European companies face unique challenges, especially when it comes to register trademarks identifying cannabis related products. The burdens of registering trademarks for products that cannot be lawfully sold across state lines in the US have their echo in Europe with its own distinctions.

In Spain, where the legal framework for cannabis is still a grey area, focusing on IP while legislators will do their homework in the regulatory area, can provide companies with a mean of safeguarding their innovations and put the basis for future growth. With an eye on the future, expected legal acceptance of a wide category of cannabinoids and cannabis related products and services, obtaining patent protection for cannabis innovations is feasible and can offer significant competitive advantages when the times of a full regulation will come. This is proved by an increasing number of patents related to cannabis, showing a clear path towards recognizing the value of IP in cannabis, in securing with anticipation a “spot of exclusivity” in the market.

For cannabis related businesses, the strategic filing of patents to cover a wide spectrum of innovations (from CBD based products, growing and cultivation techniques, medical applications, etc.), is crucial to define the role of these businesses in the future legal landscape. On the trademarks side, filing trademarks for ancillary goods and educational or informational services related to cannabis can help build brand recognition and establish market presence in anticipation of broader legal acceptance.

Moreover, the role of IP in companies and businesses valuation cannot be overlooked, with patents and trademarks constituting intangible assets to be considered in business transactions, joint ventures as well as in mergers and acquisitions within the cannabis sector. The strategic use of IP not only enhances the company value but also plays an important, I would say crucial, role in attracting investments.

Summing-up, the correct management of IP in the cannabis industry, particularly in the evolving European and Spanish markets, is becoming indispensable for businesses operating in this area. It pushes innovation, generates new specialized legal forces, while at the same time protects consumer interests. Considering the complexities of the market, as well as the (hopefully) evolving legal environment, the companies that will manage their IP assets are likely to become the future leaders of the European cannabis industry.

Sources

A Quick Guide to Cannabis Patents: What You Need to Know, available at cannabisnow.com.

The European Cannabis Report: 8th Edition, 2023, available at prohibitionpartners.com.

Five Cannabis Research Trends to Watch in 2023, available at labmanager.com.

56 Cannabis Industry Statistics for Investors in 2023, available at stash.com.

Spanish Cannabis Market Report 2024, available at cannamonitor.com

About the author

I have spent my entire professional life working in the field of Intellectual Property as a lawyer specialising in this area. In the last 20 years of my career I have enjoyed working on every single case and have had the opportunity to meet great professionals and friends from all over the world with whom I continue to collaborate on a regular basis.

On behalf of national and international clients from all sectors, I have managed large trademark and design portiolios and enforced patents, trademarks, industrial designs and copyrights before the relevant administrative bodies, Spanish and EU courts as well as arbitration and self-regulatory tribunals. Other key areas of my experience are e-commerce, advertising and marketing, unfair competition and passing-off, as well as domain names dispute resolution.

In addition to legal practice, I have had the pleasure of participating in several international projects aimed at increasing knowlegde and awareness of IP around the world, and have proudly participated in the preparatory steps of Free Trade Agreement negotiations in the past, as well as in academic activities, as a university lecturer and speaker at international conferences.

Speaks Spanish, Italian and English

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