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Plain packaging for cigarettes – tobacco manufacturing and related intellectual property rights

Published 30.10.13 at 11:43

In 2011 Australia became the first country to enforce a law requiring tobacco companies to sell cigarettes in "plain packaging", with the aim of reducing the attraction of cigarettes to young people and children. However their actions have recently been subject to challenge by The Ukraine and other supporting counties before the World Trade Organisation.[1] And, the European Parliament has recently rejected an amendment to introduce a requirement for 'plain packaging' for tobacco products. Despite the opposition faced in Australia the British government has commenced discussions about introducing a 'plain packaging' requirement in the UK.

So what is plain packaging and what is the legal basis for tobacco manufacturer's challenge to this potential new law?

Plain packaging

Plain cigarette packaging requires the removal of all branding such as colours, imagery, logos and trade marks. It permits manufacturers to print only the brand name in a standardised size, font and place on the pack. This is in addition to the health warnings and any other information required by government legislation.

Objections to the proposal - trade marks

Tobacco manufacturers argue that this proposal will infringe their IP rights, particularly in relation to use of their trade marks.

A trade mark is a sign which distinguishes a company's goods or service from that of its competitors. This can take the form of a logo, words or even the shape or colour of packaging. Companies often refer to their trade mark as their brand; a marketing tool that enables customers to recognise their product and gives the consumer the 'promise of an experience'[2] that guarantees a certain assurance to them as to the nature of the product or service they will experience.  Trade marks protect this goodwill and prevent its unauthorised use by those not registered as its owner in a similar trade.  

The tobacco companies oppose the introduction of plain packaging on the basis that removing their trade marks from packaging will dilute its effectiveness.  This is both in terms of preventing unauthorised use and enabling a consumer to identify their product.  They argue this breaches an International Agreement about intellectual property rights entered into by the British Government.[3]

In addition, the companies argue that plain packaging will make counterfeiting of cigarettes easier and as a result increase criminal activity leading to less quality control over the cigarettes people are smoking.

Trade marks and positive rights

Although there is a negative right to 'prevent' others using your trade mark, is there also a positive right to "use" a trade mark? Those in favour of plain packaging argue that if a positive right to use a trade mark was intended to exist it would have been expressly stated in the law.[4] Those opposing argue that a trade mark is the property of the company who registers it and, as it is a piece of owned property, there is an implied right to use it on packaging.[5]

Trade marks in the UK

When the UK government announced that it would consider plain packaging for cigarettes and other tobacco products[6] the response from the tobacco industry was to challenge the proposals. The four largest tobacco companies in the UK, British American Tobacco, Imperial Tobacco, Japan Tobacco International and Philip Morris each submitted independent reports against plain packaging.

On 12 July 2013 the British Government announced that it delay proposals pending reports of the impact of plain packaging in Australia.   If no improvement in public health is reported, the tobacco companies may be in a stronger position to continue exploiting their trade marks.

How far may this trend go? The implementation of legislation on plain packaging may affect tobacco companies today.  Could it one day be extended to the fast food and drinks industries?

Article by Charlotte MacPhail and Damilola Afuape, LPC students from the University of Law.

Photograph (some rights reserved) by byte


[1] http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds434_e.htm

[2]  http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm

[3] http://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm

[4]  http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2009115

[5]  http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2234580

[6] Secretary of State for Health, Healthy Lives, Healthy People: Our strategy for public health in England, 30 November 2010, Accessed June 2011

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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