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Monday, 23 April 2012

Sisters act to oppose plain packaging proposals

Sisters: all with the same objective
Today the European trade marks organisation MARQUES, for which the IPKat has a considerable affection, issued a joint press release together with five of its sister organisations in order to state their firm objection to the currently-discussed proposal to require plain or standardised packaging for tobacco products.  The other organisations are the Association des Praticiens du Droit des Marques et des Modèles (APRAM), the Benelux Association of trade mark and design law (BMM), the European Communities Trade Mark Association (ECTA), the Deutsche Vereinigung für gewerblichen Rechtschutz und Urheberrecht (GRUR) and the Union of European Practitioners in Intellectual Property (UNION).

The timing of this statement suggests that it has been prompted by last week's launch in the United Kingdom of a public consultation on this topic by the Department of Health. However, this has been a live issue in Australia (see earlier IPKat posts here and here, as well as recent news here) and New Zealand (here) and these are not the only organisations to have expressed concern over plain packaging proposals: the British Brands Group and the International Trademarks Association have done so too.

The press release is interesting for more than one reason. First, it has not always been easy to achieve consensus among the sister organisations, let alone unanimity.  Secondly, the statement is couched in terms of broad principle: the words "cigarette", "tobacco", "smoking" and so on will not be found in it. This is what it says:
OBJECTION TO THE ADOPTION OF RESTRICTIVE LEGISLATION OR POLICY OPTIONS FREQUENTLY REFERRED TO AS “GENERIC” OR “PLAIN PACKAGING”.

The signatories of this statement are dedicated to the protection and development of intellectual property rights in general and trade marks in particular. Based upon the expertise and experience of their members – including professional representatives and other practitioners, in-house counsel, IP owners representing all industry lines, IP judges and law professors – they take an active, ongoing interest in legislative projects and regularly submit their comments and proposals, both on the EU and Member State level.

The signatories are all united by the principle of advancing the cause of IP laws to ensure that IP rights - and particularly, though not exclusively, trade marks and trade dress - are well protected against any abuse and misappropriation. At the same time they appreciate that the interests of right holders need to be reconciled with the public interest in a balanced and well-functioning IP system, in order to protect the consumers from deception and confusion. IP rights are a cornerstone of the European economic system and the Internal Market. They provide significant value to their owners and wider wholesale and retail circles. They are likewise essential to safeguard the public faith and the interests of consumers.

Specifically trade marks and trade dress are relied upon by consumers as signposts of genuine goods and services. This is true for both word marks and figurative marks (graphical devices), and for signs resulting from the combination of the two, as well as so called “non-traditional” trade marks such as packaging shapes and colours per se. Trade marks also indicate the source of goods and services to assure consumers on the quality of the products that they purchase or that they would consider purchasing. This fundamental function cannot be fulfilled if trade marks are not noticeable, or unavailable, to consumers when selecting a product. The inability to recognize a brand or trade mark on a product would lead to consumer confusion, and therefore diminish the goodwill acquired in that brand through considerable investment and effort over a significant period of time. In fact the inability to call for or recognize a brand also takes away a consumer’s freedom of choice.

The IP business and professional communities have very strong concerns that any legislation that precluded – whether fully or in part – brand owners from the ability of making legitimate use of their trade marks, would amount to an indirect legislative expropriation of private intellectual property and, as a consequence, lead to the extinction of their property rights. Any such legislation would adversely affect the markets, with harmful impacts on the economy as a whole as would be derived from escalating counterfeiting and piracy throughout the EU and worldwide. Where there is a need to achieve important public objectives, any developing legislation and/or policy options should not deviate from maintaining an appropriate balance with legitimate intellectual property and other proprietary rights.

Consequently, the signatories of this letter object to the adoption of restrictive legislation or policy options, frequently referred to as “generic” or “plain packaging”.
The question of expropriation of proprietary rights was raised in this context on this blog as long ago as June 2008 by Christopher Morcom QC, here, and it will be interesting to see how the arguments play out in court as well as before national legislatures.

Merpel notes a curious parallel between trade marks and patents: just as many people who would ban genetic modifications of life forms seek to prevent the granting of patents for them, so too would many people who would ban smoking seek to destroy the trade marks and trade dress that protect them.  If the object of the exercise is to make people stop smoking, surely the best way is to ban it rather than to turn cigarettes from a branded product into a commodity?

10 comments:

Hans Sachs said...

So really, dear Merpel...

Would you fight for unrestricted use of trademarks on billboards near schools or in comic books aimed at kids to sell guns,or alcoholic beverages or narcotic drugs to children ? Or even in mass circulation tabloids?

A trademark registration is not a license to advertise wares and services that can maim, injure or even worse....

Restrictions are expressly permitted in TRIPS....

Please don't be naive...

Hans

Merpel said...

Hans, you sweet old thing, your analogy isn't very helpful --or even relevant.

We have lots of rules that govern how cars are driven, parked, insured etc -- but we don't ban car trade marks.

Anonymous said...

I find it frankly loathsome that these professional associations, clearly influenced by some very wealthy clients, lend themselves to support the opposition to a most beneficial, and popular, proposal.

"but we don't ban car trade marks".

On the other hand, some trade marks are banned (remember the "Cocaine" brouhaha?). And it is frankly disingeneous to call plain tobacco packaging a ban on trade marks: it's a (further) restriction in their use, but not a ban.

Above all, putting IP above all other considerations, including public health, is just the kind of attitude that is souring public attitudes towards IP. Just when Pirate Parties are flourishing all over Europe, this kind of posturing is inappropriate at best, suicidal at worst.

Merpel McKitten (Ms) said...

To Anonymous 8:59am

A less polite kat than me would say you don't know what you're talking about.

Take a look at the UK register, which is available online. There you will find registered many marks such as COCAINE, POISON and OPIUM (incidentally HEROIN started off as a trade mark).

None of the named organisations is putting IP above public health and it's entirely inappropriate for you to say so.

Marijana Kozakijevic said...

As always, thank you for keeping us informed! But I disagree with your last remark. Since when has banning something made people stop doing it? On the contrary, it makes it all the more attractive! But take away the brand and the positive image associated with it, and the product will no longer be so attractive. After all, people relate strongly to the messages behind brands and identify themselves with the brand and the life-style implied by the brand. Using a particular brand is a way of sending a message about who we are. Isn’t that what a brand is really about?

Anonymous said...

Surely part of the question is if trade marks are an exclusive right to stop other people using a particular mark or are they a right to use a mark?

I would suggest that they are the former and so the tobacco companies' arguments are mere puffs (sorry). This is because they have no positive rights to use something. They have a monetary interest in a brand, but that is monetised by selling more fags.

It seems to be tobacco should be dealt with as something addicts need rather than a lifestyle choice and I think that the IP organisations should probably look for a cause a little less murky to support.

Paul Leonard said...

All the comments seem to be addressing the limitations placed on the tobacco companies, rather than the possible adverse effects on consumers. My only concern is the possibility of aiding counterfeiting. If one is going to be silly enough to smoke (which, sadly, I am) I would like to know that I'm smoking what I think I'm smoking, and not something which might be even more harmful. I'm not sure if there has been enough time since the Aussie TM ban to make a proper judgment, but I suspect it will make little difference. Hope it does!

Almost Emeritus said...

Surely the [original] function of a trade mark was to distinguish the goods of one person from the goods of another, and the system of registered trademarks eliminates the need to establish reputation in your own mark.

While I haven't smoked for many years [when I gave up, 20 Embassy cost 4/6d] I can't recall ever having bought cigarettes for the attractiveness of their packets. Rather the information on the packet, including the trade marked brand name, indicated the nature and quality of the goods.

I agree with Paul Leonard's concerns about counterfeiting: plain packets must be easier to counterfeit than coloured, and the high [and increasing] cost of tobacco products is certain to be attractive to counterfeiters.

I fear that this is yet another example of people feeling that they have to be seen to be doing something, even though what they propose will not actually achieve anything positive.

Hans Sachs said...

The argument about colourful artistic trademarks being harder to counterfeit is simply nonsense. When it’s so easy to counterfeit currency itself with modern reprography, is the trivial extra cost and effort of copying a pretty package going to make any real difference?

Phillip Morris will still be able to sell its carcinogenic product under the Marlboro® trademark. It’s just that this will have to be in plain font without any pretty graphics or pictures of cowboys on horses galloping around fresh mountain air.

There are all kinds of limitations out there already on how trademarks for products such as prescription drugs, guns, pornography, etc. can be used. This is simply one more. If – more realistically when – the sale of cigarettes is actually banned outright in some countries as a hazardous product or on some other basis, then will there still be whining about expropriation of IP rights?

TRIPs already contemplates the limitation on use of trademarks for public health and safety reasons and the protection of the IP rights per se when such limitation is due to mandatory non-use. See Articles 8 and 19. I understand that Australia will also expressly deem that non-use of a trade-mark on a package will not per se result in the loss of the registration or rights that flow from it.

I’ve seen some undoubtedly expensive and inaccurate opinions on this subject – which is to be expected. But, I’m sad to see reputable IP organizations being cajoled into supporting commercial causes – especially such a blatantly bad one and based upon erroneous analysis of international law.

Hans

Anonymous said...

While I haven't smoked for many years [when I gave up, 20 Embassy cost 4/6d] I can't recall ever having bought cigarettes for the attractiveness of their packets.

Industrial design history begs to differ. The truth is, successful tobacco companies have always taken great care in ensuring the attractiveness of their packaging, which is why they are appalled by this plain packaging proposal.

The "confusion" argument seems utterly disingeneous. Surely, if the only distinguishing feature is the brand name, consumers will rather pay more attention to it, rather than less. Furthermore, these days it isn't as if one could absent-mindedly pick a packet from a supermarket shelf anymore: restrictions on sales to minors have made it an over-the-counter item.

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