Plain packaging tobacco decision shows intellectual property is not sacrosanct
Where once intellectual property rights were considered sacrosanct, a couple of recent legal decisions indicate the ground is shifting in some areas of the law.
Plain packaging laws deemed a legitimate public health measure
It was recently reported around the world that the dispute panel of the World Trade Organisation had ruled that Australia’s plain packaging laws for cigarettes were a legitimate public health measure and did not constitute an illegal barrier to trade.
The WTO ruling is not expected to be published until July, but it follows other setbacks for international tobacco giants seeking to take legal action against Australia for impinging on their trademark intellectual property rights.
The leak of the WTO decision, as reported by the Bloomberg news agency, was a significant victory for Australia and affirms the right of governments to take action for the wellbeing of their citizens, even though the action may impinge on intellectual property rights.
Tobacco companies protest against erosion of IP brand rights
The tobacco companies had argued that plain packaging laws were an infringement of their IP rights, and Australia’s action in 2012 imposing plain packaging and graphic cancer warnings on cigarette packets was a world first in overturning IP brand rights.
The tobacco giants argued that such government legislation could set a precedent for other countries to implement new labelling rules for alcohol and junk food. The WTO case against plain packaging was lodged by several nations, including Indonesia, Cuba and Honduras. They argued that Australia’s plain packaging laws imposed unfair restrictions on the use of trade marks, geographical indications and other markings in violation of several WTO agreements.
Other countries follow Australia’s lead on plain packaging
The WTO rulings open the door for more countries to follow Australia’s lead in imposing plain packaging on tobacco products. France, Hungary, Ireland, New Zealand, Norway, Slovenia and the UK have already adopted their own plain packaging rules and it is under consideration in Canada, Turkey, Singapore and South Africa.
This decision, along with other adverse rulings in international jurisdictions on tobacco packaging, points to a shift in the security of intellectual property rights that could have an impact beyond Big Tobacco.
I imagine there would be little public support for the right of tobacco giants to sell their product in attractive packaging, but there could be concern this could lead to the overturn of other IP rights in the name of the public good.
Wine educator wins right to trade mark the name “Champagne Jayne”
A recent decision on use of the word “champagne” reinforces this shift. The champagne region of France has strenuously enforced its intellectual property right to the word “champagne” for decades. Its trade association took legal action against anyone who used it, and nearly always won.
When an Australian wine educator and commentator, Jayne Powell, tried to trademark the name “Champagne Jayne” the French came down hard, taking her to court to stop her using the name even though she wasn’t a producer.
But after a five year battle the Australian Federal Court ruled in her favour, allowing her to register “Champagne Jayne” as her trade mark. The court found using the word “champagne” in her role as a wine educator did not breach the ban on labelling sparkling wine as champagne. (See Comité Interprofessionnel du Vin de Champagne v Powell  FCA 1110.)
It’s a lesson for anybody who seeks to protect their brand under the Trade Marks Act, and demonstrates the need to know one’s legal rights in a changing world.
What is a trade mark?
Section 17 of the Trade Marks Act defines a trade mark as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.
This can include a letter, number, word, phrase, sound, smell, shape, logo, picture or packaging. Cadbury’s purple wrapper has a trade mark. Put the letter “i” in front of anything and Apple will come knocking. Same with putting “Mc” on any food outlet, or using the word “Olympic” or “Anzac” on a business or product. Try using Superman, Batman or Wonder Woman and you could prompt a visit from a superhero lawyer.
The rules and regulations governing intellectual property are constantly changing, so it is important to stay on top of them to protect your own intellectual property and make sure you aren’t breaching somebody else’s rights.