Will food or car companies be next to lose their
trade mark rights?
Australian politician Nicola Roxon might have changed jobs,
but her fight to make cigarette manufacturers sell their
products under plain packaging continues.
As Australia's minister for health and ageing, Roxonintroduced
world-first plain packaging measures for cigarettes, cigars and
loose tobacco. That law is due to take effect in December, when
cigarette packets will need to appear in the same standard
drab, dark brown packaging with a graphic health warning set to
be 150% bigger.
The proposal and subsequent passing into law outraged
tobacco companies who railed and rallied, complaining that laws
requiring them to remove their logos from their products amount
to state-organised theft of intellectual property.
"IP owners will
need to wait and see which, if any, industry might be
Between them, tobacco companies hired most of Australia's
best-known IP legal teams in one role or another and set about
filing lawsuits. Once again, they find themselves up against
Roxon, this time in her role as the country's attorney-general
(the former lawyer and trade union organiser took over the job
in December last year).
In April, the High Court of Australia began hearing from
four multi-national tobacco companies. They argued that since
Packaging Act 2011 does not offer them any compensation it
breaches Section 51(xxxi) of Australia's Constitution, which
provides that the government may not acquire property other
than on just terms. The Court is expected to rule later this
year. Meanwhile, Roxon will be following two other legal
filed a complaint against the law under the TRIPs Agreement at
the WTO (rather strangely for a country with little tobacco
industry of any note), and Philip Morris launched an action in
Hong Kong under an investment treaty between the two
Australia's legislation has divided trade mark owners and
their advisers around the world. Some argue it is a slippery
slope towards appropriation of trade mark rights more
generally: beginning with tobacco and moving on, perhaps, to
sugary drinks, fatty foods and petrol-guzzling cars.
Others are wary of teaming up with Big Tobacco – an
industry tainted by association with lung cancer –
even in the fight for trade mark rights. Those IP owners who
have spoken up in favour of brands and logos rarely wish to
highlight the threat posed by legislation with a laudable
health aim. In a
statement warning of the dangers of plain packaging issued
by a group of European trade mark associations including
Marques and Ecta in April, for example, the 500-word piece
entitled Objection to the adoption of restrictive legislation
or policy options frequently referred to as "generic" or "plain
packaging" never once referred to tobacco.
If Roxon's legislation survives multi-million dollar
lawsuits then plain packaging regimes could be exported around
the world. Tobacco manufacturers have so far found few
sympathisers among the public to their complaints of trade mark
theft. IP owners will need to wait and see which, if any,
industry might be next.
|Where Australia led,
will other countries follow?
Roxon's influence on IP looks set for export. A
number of countries are watching the legal challenges
in Australia closely and are readying to follow its
lead if the courts uphold it.
New Zealand: In April, Associate
Minister of Health Tariana Turia
said that the Cabinet will draft a law "in
alignment" with Australia's. She expects to begin
public consultation later this year. Roxon
welcomed New Zealand's announcement and
acknowledged Australia's influence. "Australia is proud
of its world-leading plain packaging legislation", she
said. "We know the eyes of the world were on us while
we strongly defended our position in the High
UK: In the same month, the UK
launched a consultation on plain packaging laws
that closed on July 10.
EU: The Directorate-General for
Health and Consumers is due to put forward plans this
year for updating the
Tobacco Products Directive, which sets out how
tobacco products should be manufactured, presented and
sold in the EU. Officials have acknowledged that plain
packaging was the most controversial of the policy
options for improving consumer information among member
states, MEPs, and national parliamentarians who
responded to a consultation.
Who won the argument over plain packaging?
Australia hit by WTO action over plain packaging
Plain packaging: who will be next?
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