The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights: A Commentary by J. Malbon, C. Lawson and M. Davison

The Plain Packaging Dispute
 

This section focuses on the WTO DSB dispute Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging.

The dispute was first instigated by the Ukraine (DS434) when it made a request on 13 March 2012 for consultations with Australia about its tobacco packaging laws, which came into effect in December 2012. The laws require that tobacco products appear in standardised packages which are predominantly drab olive green, have no trademarks, have the brand name in a prescribed font and size, and have graphic photographs showing some of the impacts of smoking on some users. The challenged laws are the Tobacco Plain Packaging Act 2011, and its implementing regulations; the Trade Marks Amendment (Tobacco Plain Packaging) Act 2011; and any amendments, extensions, related instruments or practices.

The Ukraine claimed that the Australian law was inconsistent with TRIPS Articles: 1.1, 2.1, 3.1, 15, 15.1, 15.4, 16, 16.1, 16.3, 20, 1, 27; the Agreement on Technical Barriers to Trade Articles 2.1 and 2.2; and GATT Articles I and III:4. A panel was established on 28 September 2012, but was not composed. A record number of Member countries reserved their third party rights.

Other countries subsequently initiated proceedings against Australia and requested consultations, namely the Dominican Republic (DS441 – 18 July 2012), Honduras (DS435 - 4 April 2012), Cuba (DS458 - 3 May 2013) and Indonesia (DS467 - 20 September 2013).

A number of Members requested to join the consultations. Recently, Australia informed the DSB that it had accepted the requests of Brazil, Canada, Cuba, the Dominican Republic, the European Union, Guatemala, Honduras, New Zealand, Nicaragua, Norway, Ukraine, and Uruguay to join the consultations. To date a panel has not been composed regarding any of the disputes. Australia is apparently seeking to have the matter proceed to a panel hearing as soon as possible. It is thought that some or all of the complainants are stalling because of the perceived benefits in maintaining legal uncertainty, which are thought to prevent other Members following Australia’s precedent.

There a number of books and numerous academic articles dealing with the dispute. Some of which are listed below.

Books

Tania Voon, Andrew D. Mitchell, Jonathan Liberman, Glyn Ayres Public Health and Plain Packaging of Cigarettes (Edward Elgar, UK: 2012) 

Chapters

1. Introduction - Tania Voon

2. The WHO Framework Convention on Tobacco Control: The International Context for Plain Packaging - Kate Lannan

3. Plain Tobacco Packaging in Australia: The Historical and Social Context  - Jonathan Liberman, Michelle Scollo, Becky Freeman and Simon Chapman

4. Plain Packaging of Cigarettes and Constitutional Property Rights - Simon Evans and Jason Bosland

5. The Legitimacy of Plain Packaging under International Intellectual Property Law: Why there is no Right to Use a Trademark under Either the Paris Convention or the TRIPS Agreement  - Mark Davison

6. Implications of WTO Law for Plain Packaging of Tobacco Products - Tania Voon and Andrew D. Mitchell

7. Implications of International Investment Law for Plain Tobacco Packaging: Lessons from the Hong Kong–Australia BIT - Tania Voon and Andrew D. Mitchell

8. Implications of Ongoing Trade and Investment Disputes Concerning Tobacco: Philip Morris v Uruguay - Benn McGrady

9. Plain Packaging in a Broader Regulatory Framework: Preventing False Claims and Investor–State Lobbying - Thomas A. Faunce

10. Plain Packaging of Cigarettes under EU Law - Alberto Alemanno and Enrico Bonadio

Academic articles

Richard Coates (2012) ‘To What Extent Can the UK Defend the Efficacy of Plain Packaging Legislation for Tobacco Products?’, Pembroke College, University of Cambridge. SSRN working papers series

Mark Davison (2013) ‘Plain Packaging and the TRIPS Agreement: A Response to Professor Gervais’, Australian Intellectual Property Journal, 23, 160

Mark Davison and Patrick Emerton (2014) ‘Rights, Privileges, Legitimate Interests, and Justifiability: Article 20 of TRIPS and Plain Packaging of Tobacco’, American University International Law Review, Forthcoming; SSRN Monash University Faculty of Law Legal Studies Research Paper No. 2013/24

Mark Davison (2012) ‘Plain Packaging of Tobacco and the “Right” to Use a Trade Mark’, European Intellectual Property Review, 8, pp. 498-501

Becky Freeman, Simon Chapman and Matthew Rimmer (2007) ‘The Case for the Plain Packaging of Tobacco Products’ Addiction, 103, 580–590

Jeffrey Dropea and Raphael Lencuchab (2013) ‘Tobacco Control and Trade Policy: Proactive Strategies for Integrating Policy Norms’, Journal of Public Health Policy, 34, pp.153–164

Tara Francis (2012) ‘Plain Cigarette Packaging Begins in Australia’, The Lancet, 380, p.1896

Susy Frankel and Daniel J Gervais (2013) ‘Plain Packaging and the Interpretation of the TRIPS Agreement’, Vanderbilt Journal of Transnational Law, 46, 1149

Sarah A. Hinchliffe (2013) ‘Comparing Apples and Oranges in Trademark Law: Challenging The International and Constitutional Validity of Plain Packaging of Tobacco Products’, The John Marshall Law School Review Of Intellectual Property Law, 13, 130

Holly Jarman (2013) ‘Attack on Australia: Tobacco Industry Challenges to Plain Packaging’ Journal of Public Health Policy, 34, 375–387

Tim K. Mackey, Bryan A. Liang, and Thomas E. Novotny (2013) ‘Evolution of Tobacco Labeling and Packaging: International Legal Considerations and Health Governance’, American Journal of Public Health, 103, pp. e39-e43

Althaf Marsoof (2013) ‘The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation’ The Journal of World Intellectual Property, 16, p.197

Henning Grosse Ruse-Khan (2013) ‘A Conflict-of-Laws Approach to Competing Rationalities in International Law: The Case of Plain Packaging between IP, Trade, Investment and Health’, Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 13-05; SSRN.

Robert Stumberg (2013) ‘Safeguards for Tobacco Control: Options for the TPPA’, American Journal of Law & Medicine, 39, pp.382-441

Tania Voon (2013) ‘Flexibilities in WTO Law to Support Tobacco Control Regulation’, American Journal of Law and Medicine, 39, pp.199-217

Other matters of interest

EU- Seizure of Generic Drugs in Transit DS409

Brazil sought consultations with the EU and the Netherlands on 12 May 2010 regarding repeated seizures on patent infringement grounds of generic drugs originating in India and other third countries but transiting through ports and airports in the Netherlands to Brazil and other third country destinations. Brazil claimed they acted inconsistently with their WTO obligation under TRIPS Articles 1.1, 2, 28, 31, 41.1, 41.2, 42, 49, 50.3, 50.7, 50.8, 51, 52, 53.1, 53.2, 54, 55, 58, 59 and GATT Articles V:1, V:2, V:4, V:5, V:7, X:3, V:3; and the Agreement Establishing the WTO Article XVI:4.

For an account of the dispute and its resolution see Brook K. Baker (2012) ‘Settlement of India/EU WTO Dispute re Seizures of In-Transit Medicines: Why the Proposed EU Border Regulation Isn't Good Enough’ PIJIP Research Paper no. 2012-02 American University Washington College of Law, Washington, D.C. http://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?article=1026&context=research

Here is an excerpt from the abstract to her article: "European Customs officials have used fictive patent rights to justify the seizure of lawful generic medicines produced in India and destined for non- European markets. Following a public outcry and initiation of two WTO complaints, the EU has proposed amendments to Border Regulations Measure 1383/2003. The Proposed Border Regulation in its current form will not adequately resolve the risk of interception in Europe of medicines lawfully manufactured and exported from India and destined for lawful import and consumption in a non-EU country."

Other sources

Antony Taubman, Hannu Wager and Jayashree Watal, A Handbook on the WTO TRIPS Agreement (Cambridge University Press, 2012)

Blogs and Websites

• The IP Kat

• Intellectual Property Watch WTO/TRIP

• Knowledge ecology international

• Our World is Not for Sale

• Stanton Glantz, PhD blog about tobacco regulation