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Nicola Roxon, Attorney-general, Australia: When trade marks and health collide

Nicola Roxon took on Big Tobacco with a law in Australia that prioritises public health over trade mark rights. IP owners will wait to see which countries – and which products – could be next

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 next"

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 the Plain 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 challenges: Ukraine 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 economies.

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 Court."

UK: In the same month, the UK government 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.

Further reading:

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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