Plain Packaging and its Effects on International Trade
Tibor Gögh
International Trade and Investment Law Dr. James Mathis
Index
Abstract ... 3
1. Introduction ... 4
2. Tobacco Plain Packaging ... 5
3. Plain Packaging in Light of The TRIPS Agreement ... 9
3.1 Overview of The Core Issues ... 9
3.2 Obstacles to The Registration of a Trademark ... 12
3.1.1 First Obstacle ... 14
3.1.2 Second Obstacle ... 15
3.1.3 Third Obstacle ... 16
3.2 Rights Conferred ... 17
3.2.1 Reduced Occurrence of a Likelihood of Confusion as a Violation of Article 16.1 of the TRIPS Agreement ... 19
3.2.2 The Prevention of Maintenance of Well-Known Trademarks as a Violation of Article 16.3 of the TRIPS Agreement ... 20
3.3 Exceptions to the Rights Conferred by a Trademark ... 22
3.3.1 Encumbering the Use of a Trademark by Imposing Special Requirements ... 22
3.3.2 Use of a Trademark in the Course of Trade ... 23
3.3.3 Unjustifiably Encumbering Trademarks in the Course of Trade ... 23
3.3.4 Tobacco Plain Packaging and the Nature and Extent of the Resulting Encumbrance ... 25
3.3.5 Reasons for Adopting Tobacco Plain Packaging ... 28
3.3.6 Sufficient Support Between Tobacco Plain Packaging and the Encumbrance 28 4. Plain Packaging and Other Goods ... 29
5. Conclusion ... 33
Abstract
Plain packaging has been an ongoing topic from the moment Australia decided to implement its Tobacco Plain Packaging Act in 2011. The legislation itself imposes mandatory requirements on tobacco products packaging whether they are of domestic or foreign origin. As a result of these special requirements, the use of trademarks is limited to brand and variant names being displayed in a standardized manner while the rest of the packaging features large graphic and textual health warnings. Comprehensive bans on advertisement and marketing of tobacco products has resulted in tobacco corporations heavily relying on the packaging itself to market its product and increase its sales. By taking away the last avenue that tobacco products have to convey a deceitful representation as to the nature, quality and underlying health risks of the product, a handful of WTO members challenged Australia’s legislation on grounds of incompatibility with its obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights. Many other countries have expressed their interest in adopting plain packaging legislation in one form or another and with the panel report published in June 2018, it opens up a lot of possibilities of adopting plain packaging legislation for goods that carry similar if not greater health risks than tobacco. Such as alcohol, sugary drinks or junk food.
1. Introduction
The susceptibility of the human mind to colorful imagery featured on consumer products has been proven time and time again. It is for this very reason that plain packaging was incepted as a means to abolish the trademarks of tobacco companies that are seen as the last frontier that allow them to market and advertise their products which present a legitimate public health risk.1 While it has been a long and uphill battle since 2011, the panel report published in June 2018 affirms the long-standing opinion of many scholars and practitioners in that Australia’s plain packaging legislation is indeed in conformity with international trade.2 However, as reports by
the World Trade Organization (WTO) panels once circulated are subject to appeal, it is questionable as to when a definite answer to plain packaging of tobacco products will be presented. For the time being, this positive outlook raises questions as to whether plain packaging is potentially limited to tobacco products exclusively or could extend to goods that carry similar health risks.
Direct use of tobacco products are the main cause of lung cancer and chronic obstructive pulmonary disease that results in the death of six million lives annually with another million dying due to second-hand smoke exposure.3 Cardiovascular disease (CVD) on the other hand, is estimated to be the cause of death of around eighteen million humans annually which represents a third of all global deaths.4 CVDs pertain to several risk factors such as smoking, excessive alcohol consumption, high cholesterol, obesity and diabetes that only increase the probability of a heart attack.5
1 World Health Organization, Plain Packaging of Tobacco Products: Evidence, Design and
Implementation, 2016, p. 8, available at: Plain Packaging of Tobacco Products: Evidence, Design and Implementation
2 Miles, T., Geller, M., Australia wins landmark WTO tobacco packaging case, 2017, located
at: https://www.reuters.com/article/us-wto-tobacco-australia/australia-wins-landmark-wto-tobacco-packaging-case-bloomberg-idUSKBN1801S9
3 World Health Organization, Tobacco Fact Sheet, 2018, located at:
http://www.who.int/news-room/fact-sheets/detail/tobacco
4 World Health Organization, Global Atlas on Cardiovascular Disease Prevention and Control
Policies, Strategies and Interventions, 2011, p. 12, available at: WHO Global Atlas on Cardiovascular Disease Prevention and Control Policies, Strategies and Interventions
It would be only logical to assume that just as it was with tobacco, other products that present a significant health risk or are detrimental to one’s health like alcohol, sugary drinks and junk food would follow suit in being subject to plain packaging measures. Therefore, following the circulation of the panel report in Australia – Certain Measures Concerning Trademarks, it is important to identify the steps a country may pursue when harmonizing their domestic legislation to support plain packaging for goods other than tobacco to be in conformity with international trade. But first, the systematic overview regarding the disputed measure, arguments raised by either parties and a commentary on the issues of non-conformity with the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
2. Tobacco Plain Packaging
Tobacco companies with their immaculate advertising, marketing and lobbying prowess are responsible for the fact that every eighth person on the planet is an active smoker with many more exposed to passive smoking.6 As a means to thwart the increase in morbidity and mortality as a direct cause of the use of tobacco products, the World Health Organization (WHO) came forward with the Framework Convention on Tobacco Control (FCTC) in 2005 that was subsequently adopted by its members to encompass as much as 90% of the world’s population.7 While its status as a source of international law remains questionable, the FCTC nevertheless provides guidance to members in the form of objectives, principles and obligations on how to address the growing use of tobacco products by raising the public awareness of its consequences.8 As such it recommends to its members to adopt measures that would require tobacco products to feature large graphic and text warnings that act as a countermeasure to big tobacco’s practices in which they employ the packaging of tobacco products and inter alia their trademarks as a quintessential part of their marketing and advertising strategy.9
6 World Health Organization, WHO Report on The Global Tobacco Epidemic, Enforcing bans
on tobacco advertising, promotion and sponsorship, 2013, p. 12, available at: WHO Report On The Global Tobacco Epidemic
7 Ibid.
8 World Health Organization, WHO Framework Convention on Tobacco Control, 2003, Art.
11, available at: WHO Framework Convention on Tobacco Control
Another recommendation arising out of the FCTC was to consider standardized or plain packaging for all tobacco products.10 Thus, in 2011, Australia adopted legislation that would introduce plain packaging for all tobacco products sold within its borders also known as the Tobacco Plain Packaging Act (TPP).11 Being aware of the repercussions that adopting plain packaging would present, Australia supported its decision with a comprehensive research by the National Preventative Health Taskforce (NPHT) detailing the benefits to public health that the measure would have.12
Australia’s onslaught against tobacco products is the systematic outcome of a campaign spanning fifty years, that pertains to a series of indoor and outdoor smoking bans, advertising prohibitions, social marketing campaigns as well as the subsequent ban of advertising tobacco products on the internet as a reflection of the progress made in information technology over the last couple decades.13
Alongside the TPP, the Australian government also unwillingly incites smokers to quit by introducing an annually increasing excise tax on tobacco products that is set at 12.5%.14 The
implication being that a packet of premium brand cigarettes in Australia will cost you about six times as much as it would in a least developed country.15 An ongoing argument against the
increase of taxes on tobacco products was the spreading of fear, uncertainty and doubt by the tobacco industry in the form of illicit tobacco products entering the market.16
10 Ibid., Art. 13
11 Australian Government: The Department of Health, Evaluation of Tobacco Plain Packaging
in Australia, 2018, located at: Evaluation of Tobacco Plain Packaging in Australia
12 Ibid.
13 Scollo, M., Bayly, M., Wakefield, M., Plain Packaging: A Logical Progression for Tobacco
Control in One of The World’s “Darkest Market.”, Tobacco Control, 2015, p. 4
14 Scollo, M., Winstanley, M., Tobacco in Australia: Facts and issues, Melbourne: Cancer
Council Victoria, 2018, Chapter 13.2, located at: Tobacco in Australia
15 The price of a single package of Marlboro cigarettes in Dhaka is €2.29 (Taka 225) while the
same product is available in Australia for the equivalent of €19 (AU$28)
16 Jeremias, P., World Health Organization, Raising Tobacco Taxes: A summary of Evidence
from the NCI-WHO Monograph on the Economics of Tobacco and Tobacco Control, 2017, available at: Raising Tobacco Taxes
However, this has been proven to be false as the increase in illicit tobacco products is to be largely attributed to non-tax factors, such as corruption, weak governance and lack of engagement throughout the tax and customs administration.17Any arguments about the decline in sales of tobacco products and inter alia excise tax income by the government are easily dismissed by comparing the economic benefits that the increase in life expectancy and improvements in public health encompass.18 The divide becomes even more staggering when one compares the tax income from tobacco goods sales in the amount of 10 million dollars to the thirty-two billion dollars that are lost due to premature death and healthcare expenses as a result of tobacco use.19
The objectives of the TPP are fairly straightforward; improving the public health of its citizen by inciting current smokers to quit and help them from taking up smoking again as well as shielding young people and others from taking up smoking by limiting the last marketing and advertising avenue that trademarks, signs and logos represent.20 This is achieved by introducing standardized plain packaging for all tobacco products alike, regardless if they are cigarettes, cigars or cigarillos, with the intention of limiting their marketability by mandating that both the tobacco products packaging and the cigarettes must be destitute of any inserts, decorative ridges, bulges, embossing or any other special features which would make them stand out.21
The colour chosen for the cardboard packs and cartons can be defined as a matt finish dark drab brown, deemed as the least marketable colour that is accompanied by the name of the company manufacturing them in a set font and colour.22 Most importantly, these goods cannot contain any traces of trademarks or logos in the classic sense as to achieve prima facie brand recognition.23
17 Ibid.
18 Supra note 13 19 Ibid.
20 Tobacco Plain Packaging Act 2011 No. 148, Part 1, located at: TPP Act 21 Ibid., Part 2
22 Ibid.
23 Tobacco Plain Packaging Regulations 2011, Select Legislative Instrument No. 263, Part 2,
Unsurprisingly, the adoption of plain packaging legislation culminated in three different challenges. In the constitutional challenge in two matters regarding the TPP, the majority of the High Court of Australia held that for the legislation to be heralded as an infringement in the way of acquiring of the plaintiffs’ intellectual property rights and goodwill, there would have been necessarily an accrual to the benefit of their rights to another.24 While the plain packaging legislation did limit their intellectual property rights, no transfer of these rights either to the Commonwealth or to anyone else happened and thus could not trigger the relevant constitutional provision.25
The second attempt came as an investor-state dispute under the Australia – China Bilateral Investment Treaty (BIT) between claimant Phillip Morris Asia and Australia. Claims citing an instance of expropriation of the claimant’s intellectual property rights and a breach of the Fair and Equitable Treatment (FET) principle were unfortunately left unanswered as the International Centre for Settlement of Investment Disputes (ICSID) tribunal dismissed the case on grounds of the claimant seeking favourable treaty provisions by the corporate restructuring of the company.26 This instance of treaty shopping was grounds enough for the tribunal to
dismiss the case on jurisdiction and any of the claims raised during the arbitration as inadmissible.27
The last and still continuing dispute is the one where Australia with its plain packaging legislation is purportedly inconsistent with its obligations under WTO law.28 Specifically Articles 2.1, 15.4, 16.1, 16.3, 20, 22.2(b), 24.3 of the TRIPS agreement and in turn Articles 6 quinquies, 7 and 10bis of the Paris Convention as well as Articles 2.1 and 2.2 of the Technical Barriers to Trade (TBT) agreement and Article III:4 of the General Agreement on Tariffs and Trade 1994 (GATT 1994).29
24 British American Tobacco Australasia Limited and Ors v. The Commonwealth of Australia,
Case S398/2011, 2012, available at: Judgement Summary
25 Ibid.
26 Philip Morris Asia Limited v. The Commonwealth of Australia, UNCITRAL, PCA Case No.
2012-12, Award on jurisdiction and admissibility, art. 588, available at: Award on Jurisdiction and Admissibility
27 Ibid.
28 Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other
Plain Packaging Requirements Applicable to Tobacco Products and Packaging (WT/DS434, DS435, DS441, DS458, 467), located at: WTO
Following Ukraine’s request for consultations in 2012 (DS434), Honduras (DS435), The Dominican Republic (DS441), Cuba (DS458) and Indonesia (DS467) briefly followed suit to challenge Australia’s regulatory regime on tobacco goods under the heading of ‘’Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging.’’30
3. Plain Packaging in Light of The TRIPS Agreement
3.1 Overview of The Core Issues
During the course of the WTO dispute, the complainants have pointed out several areas of the TRIPS Agreement that according to them Australia’s TPP is in breach of. These would concern the registration of a trademark, rights conferred by a trademark, use of a trademark in the course of trade, national treatment and geographical indications. Above them all, however, lies a more pressing issue as the TRIPS Agreement does not explicitly feature treaty language that would allow for the deliberate adoption of legitimate public policy measures as opposed to treaty language found in the relevant provisions of the GATT 1994, TBT and SPS Agreements. Prior to the publishing of the panel report in Australia – Certain Measures Concerning Trademarks, was the notion that a member adopting measures for the improvement of public health would need to rely on the context given by the preamble, objectives and principles of the TRIPS Agreement as well as the Doha Declaration on the TRIPS Agreement and public health (Doha Declaration). The Doha Declaration of 2001 is a document which was adopted as a collective agreement by the WTO members at the Fourth Ministerial Conference.31
30 Ibid.
31 Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other
Plain Packaging Requirements Applicable to Tobacco Products and Packaging – Report of the Panels, (WT/DS435/R WT/DS441/R WT/DS458/R WT/DS467/R), 28 June 2018, para
While big tobacco dismisses the instrument’s significance in the dispute in that it is merely a declaration, the panel has affirmed that pursuant to Article 31.3(a) of the Vienna Convention on the Law of Treaties (VCLT) it does indeed constitute a subsequent agreement between the parties.32 Article 5 of the Doha Declaration thus states that:
‘’In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.’’33
Rather than focusing on the interpretation of a specific measure, Article 5 of the Doha Declaration extends to the way in which all of the TRIPS Agreement provisions are to be correctly interpreted.34 The objectives and principles that provide for significant context in relation to the provisions of the TRIPS Agreement can be found in Article 7 and 8 respectively. Article 8 encompasses the principles of the TRIPS Agreement:
‘’Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.’’35
Without the possibility to rely on strong treaty language in favour of domestic regulation under the TRIPS Agreement, every single aspect of the interaction of a measure and its potential non-conformity with its provisions needs to be taken into consideration. As a result, not only do the words chosen by the drafters in Article 8 of the TRIPS Agreement present an inherent problem, but so does the low number of cases in the WTO’s history concerning the agreement in general, let alone trademarks specifically.36
32 Ibid., 7.2409
33 World Trade Organization, DOHA WTO MINISTERIAL 2001: TRIPS
WT/MIN(01)/DEC/2, 2001, located at: Declaration on the TRIPS agreement and public health
34 Supra note 31
35 Agreement on Trade-Related Aspects of Intellectual Property Rights, available at: TRIPS
Agreement
36 World Trade Organization, Dispute Settlement Cases in the Area of TRIPS,
INT/SUB/IPD/204, 2015, available at: Dispute Settlement Cases in the Area of TRIPS (as of March 2015)
Article 7 of the fulfils the role of the objectives of the TRIPS Agreement in that it emphasizes the importance of weighing and balancing the societal goals mentioned in the provision: ‘’The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.’’37 As will be demonstrated further below, both of these provisions play a crucial role in the argumentation used by the panel to justify the TPP in light of the TRIPS Agreement. However, given the length and problematic nature of the subject matter of the dispute, one begins to wonder why an explicit mention similar to that found in Article 4 of the Doha Declaration cannot be found in the TRIPS Agreement. Article 4 of the Doha Declaration states the following:
‘’We agree that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO members' right to protect public health and, in particular, to promote access to medicines for all.’’38
There is no doubt that the article was drafted to highlight the importance of pharmaceutical patents in the form of medicines, but the language used would correspond to an understanding of achieving the goal of improving public health that must extend to measures concerning areas of intellectual property law other than patents as well. While Article 4 of the Doha Declaration was used as an argument in most of the submissions made, the panel in Australia – Certain Measures Concerning Trademarks surprisingly does not mention it in any way. The panel rather relies on the interpretation and context provided by Article 5 of the Doha Declaration most likely as a reason to avoid any hooks for the complainants to appeal on the credibility of an instrument such as the Doha Declaration and the lack of interpretative guidance found in Article 4 pursuant to the principles of treaty interpretation encompassed in the VCLT.
37 Supra note 31, para 7.2403 38 Supra note 33
3.2 Obstacles to The Registration of a Trademark
As noted earlier, the TPP mandates the exterior characteristics of tobacco products and its packaging by limiting the way in which trademarks and marks are allowed to appear on it. The complainants argue that by virtue of Article 15.4 of the TRIPS Agreement that is titled as ‘protectable subject matter’, the TPP serves as an obstacle to the registration of a trademark on three grounds.39 Article 15.4 reads as follows:
‘’The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.’’40
For a violation of the article mentioned above to happen, there would have to exist an obstacle to the registration of a trademark and this obstacle be directly related to the nature of the goods or services.41 The definition of a trademark as well as its registration has been a disputed topic during the course of the proceedings with opinions often colliding, it is therefore necessary to give these words meaning in light of the TRIPS Agreement.42
Prior to the establishment of the WTO, searching for a definition, scope of its rights or the protection of a trademark would be a tedious process as both the Berne Convention for the Protection of Literary and Artistic Works 1886 and the Paris Convention empowered their signatories to adopt the relevant domestic legislation.43 Thankfully, with the adoption of the TRIPS Agreement the definition of what constitutes a trademark can be found in Article 15.1: ‘’Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.
39 Supra note 31, para. 7.1819 40 Supra note 35
41 Supra note 31, para. 7.1823 42 Ibid., para. 7.1824
43 Marsoof, A., The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation,
Where signs are not inherently capable of distinguishing the relevant goods or services, members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.’’44
Further, the definition of a trademark is unequivocally linked to either the distinctiveness of signs as such or distinctiveness acquired through use.45 If these signs can fulfil the role of distinguishing the goods or services of one undertaking from another, then registration as a trademark becomes possible.46 Therefore ‘signs that are capable of constituting a trademark’ in Article 15.1, first sentence, are to be implicit of the meaning of a trademark within the purview of Article 15.4.47
As for the registration of a trademark, context is provided by the other paragraphs found in Article 15 of the TRIPS Agreement as well as the Paris Convention. As such, major parts of the Paris Convention have been incorporated into the TRIPS Agreement by its drafters through Article 2.1.48 In that effect, Article 6.1 of the Paris Convention states that parties to the
agreement may impose the conditions for the registration in its domestic legislation.49
This ‘considerable discretion’ is then limited by the contents of the individual paragraphs of Article 15 of the TRIPS Agreement.50 For Article 15.1, that would be the distinctiveness requirements with Article 15.2 serving as context to Article 15.1 to deny registration on other grounds than those mentioned in the former.51 Registration of trademarks is also covered in Article 6quinquies of the Paris Convention through Article 2.1 of the TRIPS Agreement and plays an important role when affording protection to trademarks that are registered in the territory of another member.
44 Supra note 35
45 Panel Report, United States – Section 211 Omnibus Appropriations Act of 1998,
WT/DS176/R, adopted 1 February 2002, as modified by Appellate Body Report WT/DS176/AB/R, DSR 2002:II, para. 154
46 Ibid
47 Supra note 31, para. 7.1830 48 Supra note 35
49 Supra note 45, para. 132 50 Supra note 31, para. 7.1843 51 Supra note 35
It also provides members with exceptions if the registration of signs would infringe third party rights, be devoid of any distinctive characters, descriptive, generic or be contrary to that of morality, public order or deceitful.52It could be argued that under certain conditions of umbrella branding (where new products are incorporated under existing brands of tobacco companies) by having the trademarks registered feature ‘qualities’ such as ‘light’ or ‘low tar’ it potentially allows members to deny registration as it would at least in theory be considered deceitful.53 Article 15.4 of the TRIPS Agreement is almost identical to Article 7 of the Paris Convention, in which it is afforded a rather narrow scope.54
Even though the very nature of tobacco products is attributable to the negative impact on public health, no member may deny registration on this ground alone.55 The Paris Convention Commentary seems to reaffirm the notion that even if tobacco products were to be completely prohibited, their right to register their trademarks would continue to exists in the event that the proprietors products would have the ban lifted in the future as it is viewed as an inherent right for the proprietor to secure his rights.56
3.1.1 First Obstacle
As previously mentioned the complainants argue that the TPP is inconsistent with Article 15.4 of the TRIPS Agreement on three grounds. The first being the notion that it prevents the registration of non-inherently distinctive signs that would otherwise be capable of acquiring distinctiveness through use.57 What the term ‘trademark’ means in Article 15.4 of the TRIPS Agreement in light of Article 15.1 has been established above.
52 Bodenhausen, G., Guide to the application of the Paris Convention for The Protection of
Industrial Property, United International Bureaux For the Protection of Intellectual Property(BIRPI), 1967, available at: Paris Convention Commentary
53 Voon, T., Mitchell, A., Implications of WTO Law for Plain Packaging of Tobacco Products
(June 30, 2011). PUBLIC HEALTH AND PLAIN PACKAGING OF CIGARETTES: LEGAL ISSUES, Andrew Mitchell, Tania Voon and Jonathan Liberman, eds., Edward Elgar, UK, 2012; U of Melbourne Legal Studies Research Paper No. 554., p. 27 available at: https://ssrn.com/abstract=1874593
54 Supra note 52
55 Supra note 43, p. 200 56 Supra note 52
These claims of inconsistency come as the complainants misunderstanding of the word ‘trademark’ in Article 15.4 to include non-inherently distinctive signs that have not yet acquired distinctiveness through use.58 The temporal aspects of the distinctiveness criteria are crucial for members to assess when ‘signs’ fulfil the criteria to be registered as a trademark, thus being capable of distinguishing the goods or services ‘as such’ or having acquired this capacity through ‘use’ at that moment in time.59 This approach stays faithful to the registration of trademarks in the past by either the first-to-use or first-to-file principle used in common law and civil law countries respectively.60
In fact, third sentence of Article 15.1 leaves it to the members to allow the registration of signs depend on them acquiring distinctiveness through use even if they are non-inherently distinctive per se.61 As there exists no explicit obligation on a member to allow registration for signs that are not-inherently distinctive or that have not yet acquired distinctiveness through use as per the definition in first sentence Article 15.1 of the TRIPS Agreement, these claims cannot stand ground as a violation of Article 15.4 by the TPP.62
3.1.2 Second Obstacle
In their second notion, the complainants argue that since the TPP prohibits the use of non-word signs on tobacco products, distinctiveness through use cannot be acquired for new non-word signs that are not-inherently distinctive and as such is directly related to the nature of the goods or services under Article 15.4 of the TRIPS Agreement.63 It may be true that if a non-inherently distinctive sign has not yet acquired distinctiveness through use, it will not be able to acquire its distinctiveness as a result of the TPP and will not become registered as a trademark.64
58 Ibid., para. 7.1861 59 Ibid., para. 7.1863 60 Ibid., para. 7.1868 61 Ibid., para. 7.1866 62 Ibid., para. 7.1872 - 7.1874 63 Ibid., para. 7.1875 - 7.1876 64 Ibid., para. 7.1881
Pursuant to the reasoning used in the complainants first notion, the definition of a trademark under Article 15.4 of the TRIPS Agreement does not extend to non-inherently distinctive signs.65 Article 15.4 serves as a tool for members to regulate the registration of distinctive signs as trademarks, because otherwise members would be unable to mandate which signs or combinations of signs can be used in relation to specific goods or services.66
The panel in Australia – Certain Measures Concerning Trademarks came to a conclusion that the TPP is not inconsistent with Article 15.4 by introducing the aforementioned criteria for non-distinctive signs:
‘’Adopting the interpretation suggested by the complainants would also lead to the illogical result that non-distinctive signs, i.e. signs that may or may not become capable of constituting a trademark through use, and with respect to which the TRIPS Agreement formulates no explicit obligation, would enjoy a right to use irrespective of the products or services to which they are to be applied, while registered trademarks, which are the central object of regulation of the TRIPS trademark provisions and to whose owners Article 16 explicitly accords exclusive rights, enjoy no such right to use. Further, by this logic, the right to use an unregistered mark would lapse upon its registration, just when its distinctiveness in the marketplace has been confirmed.’’67
3.1.3 Third Obstacle
The third and final notion in relation to the registrability of a trademark lies with the afforded protection given to trademarks under Article 16 of the TRIPS Agreement.68 The complainants argue that by introducing obstacles as to the nature of the goods and services, non-tobacco products are afforded greater protection as opposed to their tobacco counterparts.69 In other words any discrimination based on the nature of the product should be prohibited as it limits the protection afforded in the members domestic legislation.70
65 Ibid., para. 7.1881 66 Ibid., para. 7.1895 67 Ibid., para. 7.1896 68 Ibid., para. 7.1898 69 Ibid., para. 7.1899 70 Ibid., para. 7.1901
Article 15.4 merely limits the grounds for refusal that are otherwise by members made available in the second sentence of Article 15.1 and as such does not contain any mention of the protection that is afforded to a trademark once registered.71 As mentioned above, the narrow scope given to Article 15.4 and inter alia Article 7 of the Paris Convention is indicative that it only concerns the act of registration and does not go further beyond that.72 Therefore any claims of inconsistency between the TPP and Article 15.4 of the TRIPS Agreement are unfounded.
3.2 Rights Conferred
Article 16.1 of the TRIPS Agreement which is titled ‘rights conferred’ encompasses the affordable protection given to the trademark proprietor following the registration of a trademark under Article 15 and reads as follows:
‘’The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.’’73
A simple reading of the article suggests that it is drafted in a way that confers a negative right to exclude third parties from infringing their trademark rights as opposed to conferring a positive right to ‘use’ a trademark.74 Rightfully observed by Norway in its third-party submissions during the WTO proceedings, it identified Articles 15 through 21 as the de minimis standard of protection conferred to trademark proprietors.75
71 Ibid., para. 7.1912 72 Ibid., para. 7.1911 73 Supra note 35
74 Supra note 43, p. 200
75 Australia – Certain Measures Concerning Trademarks, Geographical Indications and other
Plain Packaging Requirements Applicable to Tobacco Products and Packaging (WT/DS435/441/458/467), Third Party Oral Statement by Norway, 2015, para. 1-12, available at: Third Party Oral Statement by Norway
This is affirmed by the TRIPS plus provision found within Article 1.1 of the TRIPS Agreement that allows its members to provide a higher level of protection than what is already guaranteed by the agreement.76 Effectively meaning that if a member seeks to confer a positive right to use a trademark alongside the already guaranteed negative one, then he is allowed to do so through domestic legislation.77
However, this labelling duality of positive and negative rights conferred by Article 16.1 has resulted in confusion regarding the actual scope of the obligation found within. Some of the complainants agree that Article 16.1 represents a minimum right to exclude others from using their trademarks, while others view it to oblige the members to prevent the diminishing effects that regulatory measures have on the distinctiveness of their trademarks and that such conduct effectively limits their ability to exercise their rights under the TRIPS Agreement.78 The panel in Australia – Certain Measures Concerning Trademarks in this regard comes to a conclusion that:
‘’In light of the ordinary meaning of the text and consistently with prior rulings, we agree with the parties that Article 16.1 does not establish a trademark owner's right to use its registered trademark. Rather, Article 16.1 only provides for a registered trademark owner's right to prevent certain activities by unauthorized third parties under the conditions set out in the first sentence of Article 16.1.’’79
First sentence of Article 16.1 consists of three elements that need to be cumulatively fulfilled in order for a trademark proprietor to trigger the right to prevent others from using his trademark under a system of remedies provided by the member’s domestic legislation.80 Thus for a violation of Article 16.1 to happen, the complainants would need to demonstrate that the TPP measure acts in a way in which the trademark proprietor’s right to exclude others from using his trademark is either diminished or ineffective.81 The complainants challenge the TPP on grounds of inconsistency with Articles 16.1 and 16.3 of the TRIPS Agreement respectively.
76 Supra note 35 77 Supra note 43, p. 201 78 Supra note 31, para. 7.1971 79 Ibid., para. 7.1978
80 Ibid., para. 7.1980 81 Ibid.
3.2.1 Reduced Occurrence of a Likelihood of Confusion as a Violation of Article 16.1 of the TRIPS Agreement
It is argued that by the prohibition of non-word trademarks on the relevant products, the distinctiveness of these trademarks will diminish in such a way that it erodes the association between the consumer and the product.82 According to the complainants, the demonstration of a likelihood of confusion will then be near impossible as this is one of the three elements required to exercise the right to exclude others from illegitimately using a trademark under Article 16.1.83 Likelihood of confusion would be achieved if signs that are either similar or
identical would be illegitimately used in connection with the relevant goods or services of a trademark proprietor’s registered trademark.84
Assuming that a trademark proprietor loses the ability to demonstrate a ‘likelihood of confusion’ because the TPP makes trademark infringement happen less frequently as well as concerning fewer signs than before its adoption, this would in the complainant’s view infringe on their minimum rights found in Article 16.1. Likelihood of confusion would then need to be factually evaluated taking account of all the variables present in the market, such as the disputed identical or similar signs.85 However, as mentioned above, this ‘likelihood of confusion’ needs the other two elements in Article 16.1 fulfilled in order to give the trademark proprietor the right to seek remedy in a member’s domestic legislation.86
Having a member provide for a remedy in its domestic legislation for trademark proprietor’s claims against the unauthorized use of their trademark by a third party is heralded as enough to comply with the obligations set out in Article 16.1.87 In fact the duality of rights in the context of Article 16.1 is unfounded as the negative right to prevent others from using a trademark is not precluded by the positive right of ‘using’ a trademark in relation to the goods or services.88
82 Ibid., para. 7.1982 83 Ibid. 84 Ibid., para. 7.1991 85 Ibid., para. 7.1993 86 Ibid., para. 7.1999 87 Ibid., para. 7.2000 88 Ibid., para 7.2025
3.2.2 The Prevention of Maintenance of Well-Known Trademarks as a Violation of Article 16.3 of the TRIPS Agreement
Article 16.3 incorporates Article 6bis of the Paris Convention with the necessary changes into the TRIPS Agreement and reads as follows:
‘’(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.’’89
Thus, Article 16.3 contains an obligation consisting of two elements that needs to be fulfilled cumulatively. Namely that the ‘’use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark’’ and that ‘’the interests of the owner of the registered trademark are likely to be damaged by such use.’’90 Similarly to Article 16.1, Article 16.3 confers a negative right to ‘use’ a contested trademark as opposed to a positive right.91
89 Supra note 52 90 Supra note 35
The well-known trademark proprietor within the meaning of Article 6bis of the Paris Convention has the right to ask for the refusal and cancelation of a registration as well as the prohibition of use on non-similar goods and services subject to the two elements of the obligation under Article 16.3 above.92 Article 16.2 serves as context in providing a framework to determine the factors which well-known trademarks are subject to.93
The complainants argue that by prohibiting the use of signs and marks on tobacco products they are in risk of losing their well-known trademark status and inter alia the protection arising out of Article 16.3.94 Australia’s domestic law, however, allows for a trademark to attain a well-known status even if it had previously not been used in the member’s country.95 As such, even if well-known trademarks would be at risk of losing their well-known status by non-use, they would be able to maintain it by ‘use’ abroad.96
Another aspect of the claim relates to the fact that the situations in which a trademark proprietor may rely on the protection in Article 16.3 will occur less frequently as the result of the TPP.97
Coinciding with the reasoning the panel used regarding similar claims in Article 16.1, it rules that the diminished recognition of a well-known trademark as a result of the TPP cannot constitute a violation of Article 16.3 by itself.98 As such it clarifies that at:
‘’Outside its express obligation, Article 16.3 does not require Members to refrain from taking measures that may affect the ability of right owners to maintain the well-known trademark status of individual trademarks, or to provide a "minimum opportunity" to use a trademark in the market.’’99
92 Ibid., para. 7.2099 93 Supra note 35
94 Supra note 31., para. 7.2101 95 Ibid., para. 7.2107
96 Ibid., para. 7.2109 97 Ibid., para. 7.2115 98 Ibid., para. 7.2123 99 Ibid., para. 7.2123
3.3 Exceptions to the Rights Conferred by a Trademark
The most substantial part of argumentation with regards to the TPP’s claims of inconsistency with the provisions of the TRIPS Agreement is given to Article 20 that is titled as ‘other requirements’ and reads as follows:
‘’The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirement prescribing the use of the trademark identifying the undertaking producing the goods or services along with, but without linking it to, the trademark distinguishing the specific goods or services in question of that undertaking.’’100
The complainants argue that the conditions for tobacco trademarks set out in the TPP are to be considered special requirements that unjustifiably encumber the use of a trademark during the course of trade. Pursuant to that claim a violation of the obligation under Article 20 would need to comprise of the cumulative fulfilment of the three elements found in the first sentence of Article 20.101 Namely, whether the measure at issue imposes special requirements, whether these special requirements encumber the use of a trademark during the course of trade and most importantly, whether it is done unjustifiably.
3.3.1 Encumbering the Use of a Trademark by Imposing Special Requirements ‘Special requirements’ in the light of Article 20 are to be understood as a condition of limited character that needs to be acquiesced with during the course of trade.102 The words ‘such as’ following the words ‘special requirements’, indicates that the list of examples given is of a non-exhaustive character and goes beyond of the special requirements mentioned in the second part of the first sentence of Article 20.103
100 Supra note 35
101 Supra note 31, para. 7.2156 102 Ibid., para. 7.2231
As for the word ‘encumber’, it serves as guidance to interpret whether special requirements that impede, burden or hamper a trademark in the course of trade are within the scope of Article 20.104 It is for the reasons of non-exhaustiveness that these encumbrances as a consequence of special requirements can be of a limited character in its scope in light of first sentence of Article 20 as well as of a more extensive character in which the use of a trademark would be completely prohibited in specific situations.105
3.3.2 Use of a Trademark in the Course of Trade
What it means to encumber has been established above and that leaves it to define the relevant use of a trademark in the course of trade. The phrase ‘in the course of trade’ as envisaged in Article 20 refers to commercial activities that take account of the specific products that are encumbered by special requirements as a consequence of a measure.106
It has been long established that tobacco packaging and inter alia trademarks fulfill the role in advertising itself pre-sale as well as post-sale and it is therefore that the phrase ‘in the course of trade’ in this context goes beyond the moment at which the product was purchased.107 As for the relevant ‘use’ of a trademark in the course of trade, it is to be understood as the exploitation of a trademark by the trademark proprietor to acquire commercial value and therefore extends to advertising and promotion as well.108
3.3.3 Unjustifiably Encumbering Trademarks in the Course of Trade
It is undeniable that the operation of the TPP encumbers the use of a trademark by imposing special requirements and subsequently encumbers the use of a trademark in the course of trade. However, such an encumbrance would need to be unjustifiable in order to fulfil the final of the three cumulative elements pursuant to Article 20 in order to be considered a violation of said provision.
104 Supra note 31, para. 7.2234 105 Ibid., para. 7.2239
106 Ibid., para. 7.2263
107 Ibid., paras. 7.2263-7.2264 108 Ibid., para. 7.2285
Thus, it is implied that circumstances must exists in which an encumbrance that imposes special requirements on a trademark in the course of trade would be ‘justified’ under Article 20.109 However, the TRIPS Agreement does not contain any mention of what could be considered justified and neither does Article 20 itself.
It is here that Articles 7 and 8 together with Article 5 of the Doha Declaration that were mentioned in the ‘Core Issues of the TRIPS Agreement’ section provide informed context as to the meaning of the term. Similarly, for the reasons above, one cannot rely on the interpretation of ‘unjustifiably’ with regards to Article XX of the GATT 1994 as Australia mistakenly did under the assumption that in order for an encumbrance to be justifiable under Article 20 of the TRIPS Agreement it would simply be enough to demonstrate the contribution of a member’s measure towards the envisaged legitimate public policy objective.110
The complainants argue that the ‘legitimate interests’ as mentioned in Article 17 provide for informed context to determine the justifiability of an encumbrance imposed by special requirements in the course of trade.111 Incidentally, this coincides with the opinion of the panel
in Canada – Patent Protection on Pharmaceutical Patents that the term ‘legitimate interests’: ‘’must be defined in the way that it is often used in legal discourse – as a normative claim calling for protection of interests that are ‘justifiable’ in the sense that they are supported by relevant public policies or other social norms’’112
The panel in EC – Trademarks and Geographical Indications has also defined the scope of the legitimate interests under Article 17 in that it concerns the functions of a trademark in the marketplace that affects the trademark proprietor as well as consumers.113
109 Ibid., para. 7.2396
110 Australia – Certain Measures Concerning Trademarks, Geographical Indications and other
Plain Packaging Requirements Applicable to Tobacco Products and Packaging (WT/DS435/441/458/467), Integrated Executive Summary of Australia's Submissions, 2016, para. 77available at: Integrated Executive Summary
111 Supra note 31, para. 7.2424
112 Panel Report, Canada – Patent Protection of Pharmaceutical Products, adopted 7 April 2000,
DSR 2000:V, para. 7.69, located at: WT/DS114/R
113 Panel Report, European Communities – Protection of Trademarks and Geographical
Indications for Agricultural Products and Foodstuffs, Complaint by Australia, adopted 20 April 2005, DSR 2005:X, para 7.649, located at: WT/DS290/R
Taking into account the reasons above, such as the object and purpose of the TRIPS Agreement, societal interests encompassed in Article 7, inciting regulatory measures under Article 8 and the Doha Declaration as well as taking account of the legitimate interests of trademark proprietor and consumers, the ‘weighing and balancing’ test to determine the justifiability of a measure adopted with a legitimate public policy in mind consists of the following:
‘’a. the nature and extent of the encumbrance resulting from the special requirements, bearing in mind the legitimate interest of the trademark owner in using its trademark in the course of trade and thereby allowing the trademark to fulfil its intended function;
b. the reasons for which the special requirements are applied, including any societal interests they are intended to safeguard; and
c. whether these reasons provide sufficient support for the resulting encumbrance.’’114
3.3.4 Tobacco Plain Packaging and the Nature and Extent of the Resulting Encumbrance
According to the complainants, the operation of the TPP by the prohibition of figurative elements on tobacco products diminishes their distinguishability in the marketplace and as such presents an obstacle in conveying its qualities and features.115 This limitation, however, is put in place as a safeguard against the deceitful practices of big tobacco by which they use these figurative elements to market, promote and advertise tobacco products. Ridiculous notions that tobacco packaging does not constitute a vehicle for advertising have also been raised during the proceedings.116
114 Supra note 31, para. 7.2430 115 Ibid., para. 7.2558
These claims were made under the assumption that since Australia is a ‘dark market’, tobacco products cannot fulfil that role because of the comprehensive advertising bans in its territory.117 Statements made by tobacco executives from thirty years ago seem to suggest the very opposite as they noted that in the future they might have to rely on the packaging itself to sell its products.118
Over the years the tobacco industry has employed a number of strategies to enhance the appeal of its products from variant names to packaging innovation and design as well as the use of colours to appeal to either gender.119 In the prohibition of advertisement of tobacco products in Malaysia, the packaging of the product had been given the moniker of a ‘vital microcosm’ that could be used an advertising tool at the moment of purchase as well as post-purchase.120 Big tobacco would take advantage of this by introducing innovative, special edition, value and green packaging to deceive the consumers as to the nature and quality of the goods found within.121 Similarly, several studies on tobacco packaging and smoking susceptibility have affirmed that the design takes a huge role in presenting tobacco products as appealing to young people.122
Another important factor to consider is how tobacco companies manage to compete with each other and strengthen their individual brands in an environment where limits are imposed on the marketability of their products. This has been mainly achieved by a modernization of the design of the cigarette packs themselves as declining sales often prompted the companies to rejuvenate their ‘look’.123
117 Ibid.
118 Barraclough, S., Gleeson, D. (2017). Why Packaging Is Commercially Vital for Tobacco
Corporations: What British American Tobacco Companies in Asia Tell Their Shareholders. Asia Pacific Journal of Public Health, 29(2), 132-139., p. 133
119 Ibid. 120 Ibid. 121 Ibid. 122 Ibid. 123 Ibid., p. 135
Cigarette packs would then be marketed under umbrella branding strategies that invoke the feel of a limited edition and inter alia would increase sales by featuring gimmicks such as sideways opening, hinged lids or freshness seals.124In reference to the ‘dark market’ claim it has been argued that especially due to the prohibition on advertising it enhances the cigarette pack’s status as a vehicle for advertisement rather than diminishing any possibility of marketability.125 However, plain packaging by stripping away these abovementioned methods of ‘rejuvenating’ their sales has another substantial implication and that of increasing the awareness of graphic and textual health warnings on tobacco packaging.126
This is supported by studies which take into consideration the taste ratings where testers would award higher ratings to non-plain packaged cigarettes as opposed to plain packaged ones.127 It is still expected for big tobacco to enjoy the association between its brands and consumption experience for many years to come as the brands themselves convey an image beyond the tobacco product itself.128 In a setting where prohibition on the advertisement of cigarette packets exists, but no plain packaging legislation has been adopted yet, the packaging fulfils its role of a mobile marketing tool that is likely to influence potential future consumers.129
As the TPP allows for the use of trademarks in the form of words as well as variant and brand names, evidence supports the fact that individual tobacco products remain distinguishable in the marketplace by consumers.130 Similarly the position of tobacco products in the marketplace has not withered in terms of revenue itself, despite less tobacco consumers in Australia and as such is not pertinent to a claim of decreased sales.131
124 Ibid., p. 136
125 Supra note 110, para. 33
126 Harris, J., Ares, G., Gerstenblüth, M., Machin, L., Triunfo, P., Impact of plain packaging of
cigarettes on the risk perception of Uruguayan smokers: An experimental study, Tobacco Control, Tobacco Control, 8 September 2017, p. 5
127 Mutti, S., Hammond, D., Reid, J., White, C., Thrasher, J., Perceptions of branded and plain
cigarette packaging among Mexican youth. Health Promotion International, 32(4), 650-659, 2017, p. 657
128 Skaczkowski, G., Durkin, S., Kashima, Y., Wakefield, M., Influence of premium vs masked
cigarette brand names on the experienced taste of a cigarette after tobacco plain packaging in Australia: An experimental study. BMC Public Health, 18(1), 295., 2018, p. 9
129 Dewe, M., Ogden, J., Coyle, A., The cigarette box as an advertising vehicle in the United
Kingdom: A case for plain packaging. Journal of Health Psychology, 20(7), 954-962., 2015, p. 961
130 Supra note 31, paras. 7.2569-7.2570 131 Ibid., para. 7.2572
Down-trading trends have also not been observed as the consumers who have decided to quit tobacco consumption due to the TPP or other reasons have not displayed the shift from premium priced brands to cheaper alternatives.132
3.3.5 Reasons for Adopting Tobacco Plain Packaging
As for why Australia chose to adopt the TPP can be viewed as its obligation as a developed country to pursue the improvement of public health by opposing the multibillion dollar tobacco industry, pursuing multilateral public health objectives found in the FCTC. The TPP in the context of Australia’s comprehensive anti-tobacco laws presents itself as an important addition that not only contributes to the improvement of public health, but also as a measure that is not a complete prohibition on tobacco products.
3.3.6 Sufficient Support Between Tobacco Plain Packaging and the Encumbrance The TPP was adopted with an underlying legitimate public health policy in mind and needs to be therefore evaluated regarding the contribution to its objective in contrast to the encumbrance of a trademark in the course of trade. It can be viewed as a culmination of all the comprehensive measures encompassing marketing and advertising bans, social campaigns, indoor and outdoor smoking bans, incise tax increase and placement of graphic and textual warnings on tobacco packaging that contribute greatly to the improvement of public health.
It should be highlighted that the effectiveness of graphic and textual health warnings is only increased by standardized packaging that is void of any figurative elements which could distract and deceive the consumer as to the ‘quality’ of the product. In the TBT portion of the panel’s argumentation when evaluating the reasonably available less trade-restrictive alternatives to the TPP, the complainants relied on pre-vetting as their best bet to demonstrate a violation of trade restrictiveness under Article 2.2 of the TBT Agreement. However, the panel in both reference to Article 2.2 of the TBT Agreement and its reasoning under Article 20 of the TRIPS Agreement comes to a conclusion that:
‘’A pre-vetting mechanism would introduce a possibility, which does not exist under the TPP measures, of differentiation and packaging elements that could lead to greater consumer appeal, likelihood to mislead, or distraction from graphic and health warnings.’’133
In fact, it would be counterintuitive to assume that if a measure was not viewed to be comparably apt in contributing to the improvement of public health as the TPP under Article 2.2 of the TBT Agreement, that it would be comparable under the TRIPS Agreement. The complainants in order to shift the burden of proof to Australia would need to demonstrate that a reasonably available alternative exists that is capable of comparably contributing to the improvement of public health and that the adoption of TPP was not justified. As such, the panel finally answers the question of whether a member may adopt legitimate public policy measures under the TRIPS Agreement, despite not featuring strong treaty language.
‘’The term "unjustifiably" in Article 20 provides a degree of latitude to a Member to choose an intervention to address a policy objective, which may have some impact on the use of trademarks in the course of trade, as long as the reasons sufficiently support any resulting encumbrance’’134
4. Plain Packaging and Other Goods
The question that remains to be answered is whether the improvement of public health by the adoption of plain packaging legislation is limited to tobacco products only or if it could be extended to products such as alcohol, sugary drinks, junk food or other goods.
The most significant attempt at introducing a form of plain packaging to goods other than tobacco could very well be viewed as an unintentional consequence of a labelling measure. As a result of this, the issues of the TRIPS Agreement would have possibly been elaborated on much earlier had Guatemala fought against the lobbyist nature of United States (US) corporations following the adoption of the International Code of Marketing of Breast-Milk
133 Ibid., para. 7.2594 134 Ibid., para. 7.2598
Substitutes that came as a recommendation from the United Nations Children’s Emergency Fund (UNICEF).135
Similarly to how plain packaging is aimed at the future prevention of death due to tobacco consumption, it is estimated that the promotion of feeding and abolishment of breast-milk substitutes could save up to a million children’s lives annually.136 The proposed legislation among other things bans the use of images of babies on breast-milk substitute products as a means to sever the positive association that a parent might have as to perceive the product as a viable if not better alternative to breastfeeding.137
Gerber, a US based company that specializes in these products claimed that Guatemala’s legislation is infringing on its registered trademark as it features an image of a seemingly healthy baby.138 While the legislation has been suspended by Guatemala following the threats of trade sanctions by the US, the prospects of revisiting the subject matter might become possible as Hong Kong (HK) has adopted the Hong Kong Code of Marketing of Formula Milk and Related Products, and Food Products for Infants & Young Children (HK Code).139
The HK code presents positive as well as negative requirements for breast-milk substitute in the areas of information, education, advertising and labelling.140 Specifically as per Article 8.1 of the HK Code, none of the packaging of breast-milk substitute may feature images and texts that would portray breastfeeding as something inferior or an equally viable alternative to the product.141 In other words, were an organization’s trademark to feature a baby or a mother breastfeeding a baby, the trademark or the images it portrays would be prohibited on the breast-milk substitute product sold in HK.
135 Alemanno, A., Bonadio, E., Do You Mind My Smoking? Plain Packaging of Cigarettes
Under the TRIPS Agreement (January 30, 2011). John Marshall Review of Intellectual Property Law, Vol. 10, No. 3, 2011., p. 457, available at: https://ssrn.com/abstract=1751583
136 Jacobs, A., U.S. Opposition to Breast-Feeding Resolution Stuns World Health Officials,
The New York Times, 2018, located at: NYT
137 Supra note 135 138 Ibid.
139 The Government of the Hong Kong Special Administrative Region, Government launches
code to protect breastfeeding and promote good marketing practices for formula milk products, 2017, located at: HK Code Press Release
140 Hong Kong Code of Marketing of Formula Milk and Related Products, and Food Products
for Infants & Young Children, Articles 1-9, available at: HK Code
Having in mind the panel report in Australia – Certain Measures Concerning Trademarks, the ability of a country to defend a potential dispute under the TRIPS Agreement becomes a possibility instead of having to rely on steering it into TBT territory. As the panel report is fairly new, one could identify this as the reason why the drafters of this code had not considered a plain packaging approach even though the correlation between the use of health warnings on plain packaged goods has been highlighted by Australia’s submissions during the course of the WTO proceedings.142
It is undisputed that packaging of a product has a positive effect on the perceptions of a consumer and that brands in various industries have built a legacy for many generations to come. As such, the names of brands alone like Coca Cola, McDonalds, Pepsi, Budweiser or Johnnie Walker evoke the goods and the quality they represent without even providing the need for a visual medium. Naturally, these corporations are aware of the detrimental effects their products have on the health of consumers, but choose to lobby against any kind of measure that would have an impact on their product sales. A simple one sentence mention of the prospects of adoption of plain packaging for other goods in a public statement made by the Public Health England (PHE) authority resulted in the hysteria of brand proprietors, prompting the creation of a campaign group which would advocate against the adoption of such measure.143
While the PHE and Department of Health are reluctant to recommend plain packaging to other products than tobacco yet, several studies dating back to 2012 have suggested that goods which present a public health risk should at least carry graphic or textual warning related to the risks of their use. Such propositions are deemed by many as nanny state steps where drawing of the line begins with the evaluation of detrimental health effects to the ratio of goods consumed.144
142 Australia – Certain Measures Concerning Trademarks, Geographical Indications and other
Plain Packaging Requirements Applicable to Tobacco Products and Packaging (WT/DS435/441/458/467), Integrated Executive Summary of Australia's Submissions, 2016, para. 1-14, available at: Integrated Executive Summary
143 Tatum, M., Who's next? One colour. One font. Oh, and grim and grisly health warnings. Is
the future plain for food and drink packaging? That's the fear after Public Health England cited a report looking at plain packaging extending beyond tobacco and into alcohol and HFSS categories. So, how worried should brands be?, Grocer, 240(8327), 2017, 28., p. 1
Just as how tobacco products have moved from advertising pure tobacco to introducing other compounds in their blends, foods and drinks are riddled with additives that trigger the same effect of addictiveness as nicotine.145 Nesse expressed it as:
‘’These psychoactive substances, however, disrupt the very emotions that evolved to regulate our behaviour. They arouse reward mechanisms artificially, thus stimulating the circuits that are normally fired by an event that provides a huge gain in fitness; but they provide no fitness gain, they simply create an illusion.’’146
Alcohol consumption shares a similar trait to that of tobacco in that an increasing number of young people are exposed to its use before they are legally allowed to do so.147 While historic records suggest that the total prohibition on the sale of alcohol in the US created an array of temporary positive effects, it would not find its place in the present era of international trade for a number of reasons.148 Members under a total prohibition would similarly need to tackle illicit production as technological improvements and information technology provide an infinite amount of resources for individual and mass production.
Complete prohibition not being an option presents members with only a handful of alternatives that have also been employed on tobacco products, ranging from labelling measures, excise tax increase, increase in legal drinking age, ban on advertisements, social marketing campaigns, pre-vetting and possibly plain packaging. As the use of these is not exclusive to each other, it is expected that if a push against alcohol or other products happens it will be done in a comprehensive manner.
145 Ifland, J.R., Preuss, H.G., Marcus, M.T., Rourke, K.M., Taylor, W.C., Burau, K., Jacobs,
W.S., Kadish, W., Manso, G., Refined food addiction: A classic substance use disorder, Medical Hypotheses, Volume 72, Issue 5, 2009, Pages 518-526, ISSN 0306-9877, p. 524, available at:
https://doi.org/10.1016/j.mehy.2008.11.035
146 Nesse, R., Evolution and Addiction, Addiction (Abingdon, England), 2002, p. 471, 97. 147 National Institute on Alcohol Abuse and Alcoholism (NIH), Underage Drinking, available
at: Underage Drinking
