Should Public Health Trump IP? The Tobacco Plain Packaging Perspective
May 31, 2016 (Mimesis Law) — I’m a non-smoker. To be more exact, I’ve never smoked a cigarette in my life. Nevertheless, issues about tobacco plain packaging have been occupying my attention. Why? It is because they are inseparable from intellectual property, which is obviously my field.
Tobacco plain packaging was first introduced in Australia in 2012. The objectives of the tobacco plain packaging legislation are to improve public health by discouraging people from using tobacco products, encouraging people to give up using tobacco products, preventing a relapse of tobacco use and reducing exposure to tobacco smoke. Tobacco plain packaging regulates the retail packaging and appearance of tobacco products in order to reduce the appeal of tobacco products to consumers, to increase the effectiveness of health warnings, and to reduce the ability of the retail packaging of tobacco products to mislead consumers about the harmful effects of smoking or using tobacco products.
Some other countries, including the UK, have been considering introduction of this tobacco plain packaging. On the other hand, the tobacco plain packaging generates massive protests from the tobacco industry, which is convinced that the plain packaging can have adverse effects on their business, although the recent UK high court decision let them down. As a result, in the UK, the new legislation on tobacco plain packaging came into effect on May 20th.
According to The Guardian, plain packaged tobacco products will not be sold in shops immediately, because the companies will be allowed to sell off existing stocks first, but within a few months it is expected that the major brands will no longer be distinguishable from each other apart from the brand name on the packet in standard type face, colour and size. The packs will be the same shape, size and colour and 65% of the front and back surfaces will be covered by picture health warnings, with written warnings on the sides.
In relation to intellectual property, Regulation 10 of the new legislation in the UK prohibits the use of trademarks on tobacco packaging, other than in small plain uniform typeface. The focus of argument boils down to the following two issues.
First, it is whether the objective of public health can take precedence over intellectual property. It cannot be denied that public health is important on the one hand. Various measures (e.g. an increase in price) can be taken in order to reduce the risk of health damage from tobacco products on the other. The resort to public health to diminish the influence of intellectual property is not something new. Rather it may be a common practice (see my post on 9 May). However, more interestingly, the shoe is on the other foot. In this case, the argument based on public health exception is made by developed countries, while it is made by developing countries in the context of access to medicines. Furthermore, the idea of plain packaging might spill over into other industries that can have any effects on people’s health, for instance, alcohol products.
Second, what can trademark holders do if they cannot use their trademarks? In this respect, Regulation 13 says that the Regulations do not affect registration of trademarks. As long as a trademark is registered, the trademark holder can at least prevent others from using the same or similar marks. However, if the essential function of intellectual property rights is to exercise the rights in a positive way, in other words, to use them on their own products, the new legislation could impair the raison d’etre of intellectual property rights.
As regards these two issues, any views may be presented in the near future by the WTO Dispute Settlement Body (DSB), as five cases are pending at WTO Dispute Settlement (DS). Five countries (Ukraine, Honduras, Dominican Republic, Cuba and Indonesia), which seem to count on the tobacco industry, allege that the tobacco plain packaging introduced in Australia is inconsistent with the WTO rules including TRIPS Agreement, particularly Articles 15, 16 and 20).
Will the tobacco industry’s efforts bear fruits or go up in smoke?