Plain packaging does not violate Big Tobacco’s intellectual property rights

Branding that will soon be lost. John Stillwell/PA Wire

The House of Commons has voted in favour of compulsory, standardised and logo-free packaging for cigarettes. If also approved by the House of Lords, the new law will enter into force in England in 2016. This will mean trademarks, graphics and logos will be removed from packs, except for the brand name, which will be displayed in a standard font identical for all brands in the market. Large graphic health-warning images will also dominate on the front. A dark colour such as olive green will permeate the pack.

The aim of the measure – already in force in Australia since December 2012 and approved by Ireland – is to make cigarette boxes unappealing, especially for adolescents, so reducing the prevalence and uptake of smoking in the overriding interest that is public health.

Obviously Big Tobacco strongly opposes this measure. Seen from their perspective, such a legislative move is capable of confusing consumers and is an unacceptable de facto expropriation of their (intellectual) properties, namely their powerful brands, for which they have invested, and are still investing, so much money. In particular, they have claimed that this measure infringes their trademark rights, as it would end up in banning the use of all logos and graphic, fancy and design elements, which are protected by trademark registrations, for which tobacco companies have paid and will keep on paying filing and renewal fees.

Alongside this, the industry has argued that standardised packaging will not be effective in reducing the uptake of smoking, and may even have a “boomerang” effect of increasing smoking uptake – without the possibility of adorning their packs, it is argued, tobacco companies would compete only on prices making tobacco cheaper and more affordable.

Trademark argument unconvincing

Big Tobacco’s arguments are not convincing, and when it comes to trademarks standardised packaging doesn’t encroach on these rights.

First, tobacco manufacturers will still be able to distinguish their products from those of competitors as the measure allows them to display on their packs the brand name, although in a standard font.

Second, trademark registrations do not offer their owners a positive right to actually use the protected sign, but just the negative right to prevent counterfeiters from copying it. Indeed, enterprises and businessmen are able to use brands regardless of trademark registrations: the simple fact of starting a business allows them to use signs and logos in the course of trade. And the fact that trademark registrations do not offer their owners a positive right to use the trademark allows governments to introduce measures, such as standardised packaging, that prohibit or restrict such use on public interest grounds.

Insert trademark here. Department of Health

That trademark registrations do not offer a right to use the sign also lends weight to the conclusion that plain packaging does not constitute a de facto expropriation of tobacco brands and does not expose the countries which adopt this measure (such as England, Australia and Ireland) to the risk of having to pay damages in compensation to tobacco producers under the European Convention on Human Rights and the EU Charter of Fundamental Rights (which protect, among other fundamental rights, the right to property). Basically, standardised packaging does not amount to any expropriation of any property.

As the Australian High Court eventually held in a domestic litigation concerning plain packaging, a government that introduces this measure is not “acquiring” tobacco brands – it just prohibits their promotional use on packaging on public health grounds.

A parallel could be drawn between cigarettes and cannabis. If countries want to legalise the consumption of cannabis (and there are several governments which have already done so, or are currently discussing this legislative option), they may also want to protect consumers’ health and thus prevent marijuana and hashish manufacturers and distributors from using colourful and eye-catching brands to promote their consumption.

Should we allow cannabis growers and distributors to stop these countries pursuing this legitimate public interest by permitting them to claim a positive right to use trademarks and protect their investments in cannabis-related brands? My answer is no.

The measure seems effective

Finally, contrary to what Big Tobacco claims, standardised packaging seems also effective. Australia, for example, has justified this measure by relying on convincing scientific evidence. Recent figures released by the Australian Bureau of Statistics indeed show that total consumption of tobacco and cigarettes in the first quarter of 2014 in Australia is the lowest ever recorded. The number of young people taking up smoking also appears to have fallen.

In addition, the introduction of this measure has triggered a significant spike in Australian callers to Quitline, the telephone helpline offering treatment for addiction and behaviour change, while the allegations about unintended boomerang effects of standardised packaging seem rather speculative and unsubstantiated.

The conclusion that this measure is lawful and effective is further reinforced by a multilateral treaty adopted under the auspices of the World Health Organisation and introduced in 2005, under the Framework Convention on Tobacco Control (FCTC). This treaty aims to protect “present and future generations from the devastating health, social, environmental and economic consequences of tobacco consumption and exposure to tobacco smoke”. In particular, the Guidelines to the FCTC recommend that states adopt plain packaging to increase the noticeability and effectiveness of health warnings and messages and so eliminate the effects of advertising and promotion on tobacco packs.

Whatever the tobacco companies may argue, it is the public’s health that should come first and foremost.