Using ‘HEXO CBD’ as Trade-Name took Assi to Court


Palak Arora 17/11/20 #copyright #patent #trademarks #brandprotection #infringement #trending #blogging #intellectualproperty #IPR #IPRinfo #IPlaw #IPRrights #Trademarkclickcom #IP #lawfirms #lawyers #legalmarketing #entrepreneur #Hexo #CBD #Colorado #USPTO #California #Assi

HEXO sued Assi Project Management LLC (“Assi”) along with its principals in the U.S. District Court for the Southern District of California. The reason behind taking legal action was the act of Assi of using HEXO CBD to sell CBD products in the United States. Assi is a California-based company.

Allegations made on Assi:

  • Assi was doing unfair competition practices.
  • Infringing HEXO’strademark by unauthorized selling of CBD products and services under the name HEXO CBD.
  • This infringed HEXO’s intellectual property rights, including its trademarks and trade name.

“The HEXO brand is sufficiently established, both in Canada and in the U.S., that if another company – in the same industry, no less – uses it as a part of its mark, HEXO believes the situation creates confusion for the consumer and potential for reputational issues and is ultimately a fair competition issue,” said Roch Vaillan court, General Counsel for HEXO.

About HEXO

HEXO Corp is an award-winning company. It deals with consumer packaged cannabis goods. It creates and distributes innovative products to serve the global cannabis market. The Company has two setups in Canada and U.S.A. HEXO as a trade name and mark has been used by the company since at least June 2018. It has fully adopted the name with the advent of legalization in Canada for use in connection with its products and services throughout:

  • Adult-use (recreational) and
  • Medical cannabis market.

The Company has also established its presence in the U.S. by creating HEXO USA Inc. company also has been listed on the New York Stock Exchange since January 2019.

The settlement between the parties:

The settlement between HEXO and the defendants which took place between them and also a part of permanent injunction approved by the Court:

  1. Defendants are permanently barred from using or registering a company name, trademark, or domain name consisting of the term HEXO or any similar term to it. The use of any mark, name, or designation in any manner which is likely to cause confusion in terms of its affiliation with, or association or sponsorship by HEXO;
  2. Defendants must destroy every material containing any kind of reference to HEXO CBD and delete every reference to the term HEXO, or any similar kind of term, from all websites and social media postings,
  3. Defendants must have filed notices of abandonment for its HEXO CBD trademark applications at the U.S. Patent and Trademark Office; and
  4. Assi has transferred and assigned all domain names which it owns containing HEXO or any similar kind of term (including the HEXO CBD domain name) to the Company.

“I’m pleased we were able to reach a settlement, as it is the recognition that consumers associate the HEXO mark with our company and sends a message that we will not tolerate violations of our trademark rights,” added Sebastien St-Louis, CEO, and co-founder of HEXO. “We are creating a company and brands that can stand the test of time and that can grow in legal markets as they become available to us.”

HEXO announced earlier this year that it is expanding its partnership with Molson Coors so as to create a joint venture. This helps in exploring opportunities for non-alcohol hemp-derived CBD beverages in Colorado.

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