Trevor Little

Plain packaging is officially three years old today, and last week France took a significant step towards becoming the latest country to introduce legislation for the presentation of tobacco products. However, as the spread of plain packaging continues, pro-IP voices are getting lost in the mix, with the narrative framed as boiling down to ‘pro-health interests v big tobacco’.

Australia’s Tobacco Plain Packaging Act 2011 came into force on December 1 2012, making it the first country to prohibit the use of figurative trademarks on tobacco product packaging. The battle over that legislation is still rolling on, with the World Trade Organisation yet to rule on challenges that have been filed against the regime. However, over the past 36 months, other countries have introduced similar legislation. Last week we reported on the Canadian government’s announcement that it intends to introduce plain packaging for tobacco products, leading to the prediction that it could become the fourth country (after Australia, Ireland and the UK) to pass plain packaging legislation. Just 24 hours after we posted that blog, France effectively gave the green light to legislation that should see it introduce new packaging requirements from next May.

According to reports, the vote in the French National Assembly was a close one (56 votes to 54), but means that the legislation now passes to the Senate for approval, before a final reading at the National Assembly. Therefore, contrary to a number of media reports, the legislation is not yet in place, but passage is likely a formality. Reacting to the vote, the Droits des Non Fumeurs welcomed the move, and criticised the intense lobbying against the legislation by tobacco multinationals.

The latter comment cuts to the heart of the problem with respect to the debate over plain packaging – all too often, those that argue against such legislation are characterised as pandering to the interests of big tobacco. Of course, lobbying by the latter exists and rightly so, as tobacco companies – like any commercial organisation – have the right to fight for their interests. Similarly, the ‘pro health’ lobby is equally active in its lobbying efforts. However, the debate over plain packaging is stymied by anti-plain packaging arguments being automatically characterised as an outlet for pro-tobacco voices.

Over the past few years, trademark associations have taken a vocal stance against plain packaging, arguing that it is not a ‘tobacco’ issue but a ‘brand’ and ‘legal’ one. In May, for example, the International Trademark Association (INTA) passed a resolution stating that current plain and highly standardised packaging restrictions should be rejected or repealed, pointing to its potential violation of international treaties (such as TRIPS and the Paris Convention), and arguing “that governments should seek less drastic measures that do not violate international and national law”.

There have also been warnings that plain packaging will creep into other sectors, making it an issue that is bigger than one industry. The message from trademark associations has been clear: “It’s tobacco today, it could be sugary drinks, confectionary products, fast food or alcohol next”. At the recent Managing the Trademark Asset Lifecycle event, held in New York, Etienne Sanz de Acedo, CEO of INTA, related an anecdote story from a recent visit with government officials in a particular jurisdiction, in which he was told that INTA should be “pleased” that the country was only looking to implement plain packaging for tobacco products, as they had had serious discussions about extending the regime to toys (one rationale being that the presence of branding encourages children to pressure parents to make a purchase).

Despite this, too often those in other sectors are not alive to the issue or make the decision to not get involved - and in some instances this extends to industry associations. This week, following news of developments in France, World Trademark Review reached out to a couple of international associations (for clarity, not legal/IP organisations) that we thought may have a perspective on plain packaging. Neither wanted to speak on the record. One told us that tobacco producers are not amongst its membership and it is not a lobbyist, so it had no opinion on the issue. Another told us that it didn’t consider the creep of plain packaging as likely, meaning that plain packaging for tobacco products was best addressed by the sector itself.

Tobacco companies are certainly taking up the fight (for example, this week, to mark the third anniversary of the Australian legislation, Japan Tobacco International issued a release arguing that the Department of Health’s decision to delay publication of its post-implementation review is because its own data shows the regime to have been ineffective in reducing smoking rates). However, it is important that the arguments made by trademark associations (and other interested parties on both sides of the debate) are heard and assessed in a dispassionate manner. Right now, though, it appears difficult for that to happen.  

Comments

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RE: Plain packaging celebrates its third birthday as France green-lights brand-free tobacco packs

Octavio,

I beg to differ with your assertion that Intellectual property rights do not grant a ‘right to use’. While it is certainly true that IP rights are not absolute and must be viewed in relation to their social function, numerous rulings from the Court of Justice of the European Union have confirmed that the subject matter of a trademark is, in particular, to guarantee to the owner that he has the exclusive right to use that trade mark for the purpose of putting a product on the market – para 44 Bristol-Myres Squibb and others v Paranova, Case C-427/93.

In her Opinion delivered on 6 April 2006 in Case C-348/04, Advocate General Sharpston concluded:

"Para 9 – The specific subject-matter of a trade mark thus has two components. First, there is the right to use the mark for the purpose of putting products protected by it into circulation for the first time in the EC, after which that right is exhausted. Second, there is the right to oppose any use of the trade mark which is liable to impair the guarantee of origin […]."

The need to grant protection to trademark use thus stems from the very function of trademarks, i.e. to distinguish goods and services in the course of trade. As Advocate General Jacobs concluded in his Opinion delivered on 20 September 2001 in Case C-2/00:

"Para 35 – […] Use by the proprietor is indeed a central and essential element of ownership. […] Use of a trade mark involves identifying the proprietor's goods or services as his own. Although perhaps so self-evident that it may not be specifically set out in trade mark legislation, that is the purpose for which trade marks exist […]."

Accordingly, the function and use of trade marks is recognized as the key rationale for trademark protection in the EU. This view finds further support in the principle of the unitary character of CTMs, i.e. a CTM enjoys the same protection, and is subject to the same restrictions, throughout the entire territory of the EU. This principle, also referred to in Article 1(2) of the CTMR, precludes Member States from interfering with the right to use a CTM as a result of domestic provisions, which I would argue, includes plain packaging law.

The flaw in the ‘plain packaging’ laws of France, Ireland and the United Kingdom is that they are a disproportionate and intolerable interference with the trademark rights of their owners, which impair the very substance those rights guarantee. By curtailing the right to use, France, Ireland and the United Kingdom have effectively abolished what Advocate General Jacobs called, the ‘central and essential element of ownership’.

Niall Tierney, on 05 Dec 2015 @ 14:00

RE: Plain packaging celebrates its third birthday as France green-lights brand-free tobacco packs

Dear Mr. Little,

Thank you for your update and summary.

I agree that it seems difficult to hold a dispassionate debate on the issues relating to the plain packaging of tobacco and -- perhaps -- other noxious products.

Studies and statistics submitted by each camp seem to offset and cancel each other out. Perhaps in time the conclusions will emerge more clearly. In the meantime, I believe a few points and facts could and should be recognized more widely. For instance:

1. Consumption of tobacco products and exposure to tobacco smoke are bad for human health. Is this basic point still challenged?

2. States and governments may be -- and usually are -- entrusted or mandated with advancing public health for their populations. The WHO Framework Convention on Tobacco Control (FCTC) is a reality. It emerged as the result of a fundamental consensus among many States. The FCTC “has 168 Signatories, including the European Community, which makes it the most widely embraced treaties in UN history”. (FCTC Foreword) Is this not recognised?

3. The following legal point has been controversial, but I believe it shouldn’t be: Governments have a sovereign right to regulate commerce within their jurisdictions, by means of provisions adopted sovereignly under their constitutional or legislative procedures. This includes the power to ban, limit or otherwise regulate the distribution of goods and services, and a fortiori covers “encumbrances” such as requiring plain packaging for noxious products or banning certain forms of advertising (including the use of marks -- remember the advertising function of marks?).

4. Plain packaging and other limitations on the use of trademarks in commerce are NOT contrary to any multilateral intellectual property treaty, and certainly not contrary to the Paris Convention or the TRIPS agreement. It is widely recognized that intellectual property rights do not grant a ‘right to use’ or exploit the object of those rights, but rather a right to exclude others from such use.

Other noxious or dangerous products are already subject to regulation as regards their presentation and advertising in commerce. If more follow, so be it. Public health and the public interest should continue to prevail over the private interest of companies to sell more.

Octavio ESPINOSA, on 03 Dec 2015 @ 22:49

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