Tim Lince

A panel of trademark experts have written what is claimed to be the first full-length legal and policy analysis of the IP aspects of regulatory measures affecting the packaging of certain health-related goods. Talking to World Trademark Review, a co-author of the work says that the tobacco industry’s fight against plain packaging is on the verge of defeat, and that IP associations must rethink their lobbying approach against similar measures.

Published last week, “The New Intellectual Property of Health Beyond Plain Packaging” has a global array of contributors, and is edited by legal scholar and public interest lawyer Alberto Alemanno and senior lecturer of IP law at City University in London, Enrico Bonadio. It is focused on unearthing the tension that has emerged between public health measures and IP regimes – and looks at how to balance the legitimate interests of both sides. The concluding chapters, for example, suggest that IP could be used to improve public health. One idea put forth is a proposal to modify the patent system to encourage food producers to come up with healthier products. Another looks at whether the rules on geographical indicators (GIs) could be similarly changed to encourage the production of healthier food.

This search for IP focused solutions is essential to align with governments that are increasingly health conscious, says co-author Bonadio. “We have not looked at IP negatively, as solely an obstacle to public health measures being adopted by governments, but also as a possible spring-board to protect such important public good,” he explained. “Nonetheless, most contributors concluded that those current measures which have a negative impact on IP – such as large health warnings or plain packaging on tobacco products – are legitimate and should be kept. Ultimately, we need to accept the fact that the ability of manufacturers to use their brands, especially on packaging, may be reduced in order to satisfy what is a public interest health target."

Following a number of high profile court decisions – including in continental Europe, Uruguay and the UK – the tobacco industry has been on a losing streak in its effort to reduce the roll-out of plain and standardised packaging on its products. The final hope, some commentators suggest, is the impending World Trade Organisation (WTO) panel’s decision on Australia’s plain packaging regime, with a ruling expected early next year. Bonadio, who predicts another loss for big tobacco, says that “tobacco companies, in my opinion, need to think of alternative strategies outside of litigation”.

“The WTO decision would be a turning point,” he expands. “I really don't see how they will effectively spend money to fight legal battles if it goes against them – it would certainly be an ill-informed strategy to continue down that path. I understand that they are afraid to lose their most important tool of communication – packaging – and that their reaction has been so widespread and strong because once they lose that, they will not have any other tool to communicate to their existing and potential customers. But I can't see any way to stop this trend except, perhaps, in the US, where commercial free speech is so strongly protected, especially in regards to packaging. But that is not the case in many other areas of the world, as has been shown in Australia and Europe."

A new strategy needed?

So if Bonadio is correct, and the tobacco industry’s battle against plain packaging is on the verge of defeat, then what next? We have written extensively about the fears of the ‘domino effect’ of further product sectors being faced with similar standardised packaging legislation. This could lead to similar policy battles down the road – which means, Bonadio says, that lessons need to be learned, especially by IP bodies such as the International Trademark Association (INTA).

"INTA strongly supported the case of tobacco companies, not by directly sponsoring their legal actions but by writing papers and lobbying governments,” he further explains. “The argument they relied on is that trademarks should not be touched, regardless of the type of product. And, of course, it appears that argument has not worked.” The reason for that, he claims, is that the response to public health policies cannot wholly rely on the notion that trademark rights are “a holy right that should never be touched by governments”, adding: “IP associations, including INTA, shouldn't just rely on a dogmatic approach according to which trademarks have absolute untouchable rights. Such a stance is unrealistic. Not only does it not have enough legal basis, but it also disregards legitimate policies adopted by democratically elected governments – this idea of trademarks being sacrosanct is a step too far.”

The answer, he suggests, is a more nuanced approach – which may seem against the interests of IP associations, but could be significantly more effective. “Associations should accept that IP rights are relative, like any property right,” he explains. “The property right on a person's house, for example, is not absolute – you have limitations, as there are with all tangible goods. When it comes to intangible goods, such as IP assets, the same limits apply. But associations do not distinguish the rights of trademark owners depending on the type of product - to them, if the product is legal then they should be able to use it however they like. But in recent years, some governments have realised that it is important to limit how certain IP owners use packaging to promote products that are both legal and harmful.”

That limitation of IP in recent years doesn’t just apply to tobacco products, Bonadio continues: “It has also been done in countries (and US states) that have legalised cannabis, where there are tough regulations against the type of colourful logo elements that can be used on cannabis products. Why should governments be prevented from adopting measures preventing marijuana growers from promoting their brands? It makes sense. So we need to start thinking that trademark law should be tailored depending on the kind of product we are talking about. Therefore, IP associations should focus lobbying efforts on striking a fair balance – because trademark rights cannot work with immunity from government policy.”

These will be controversial words in some quarters. But if the WTO comes down on the side of Australia’s plain packaging regime, then lessons will need to be learned – and a new approach may be needed to stop the next domino from falling.

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RE: Trademark associations should take ‘less dogmatic approach’ to plain packaging, expert urges

Looking at the Alemanno and Bonadio study from the perspective of trademarks, I have yet to be convinced that IP is inimical to the public good. On the contrary, trademarks serve not only a very important ‘indicator of origin’ function, but they also guarantee the quality of goods and services under which they are provided. This has been judicially affirmed on numerous occasions and bears out the important ‘consumer protection’ role of trademarks. Mandating the removal of trademarks actually does more harm than good and may ultimately have the unintended consequence of jeopardising, rather than enhancing, the public good.

Niall Tierney, on 07 Oct 2016 @ 20:05

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