Not for the first time, the IPKat finds himself hosting another piece on the treatment of trade marks and branding in the context of proposals to discourage the dangerous and unhealthy uses to which tobacco is put. Caught in the crossfire between the tobacco giants (who have the funds with which to fight, plus the loyalty of consumer addiction on their side) and the European Commission (armed with the de jure power to propose legislation and the de facto power to push it through), the position of tobacco brands is unenviable, if not untenable.
In this guest contribution, veteran trade mark commentator Christopher Morcom QC argues that, in the gathering momentum towards amendment, the role and function of trade mark rights has been insufficiently considered. This is what he writes:
"The European Commission's revised Tobacco Product Directive published today: the threat to intellectual property rights
press release and text of proposal). In essence, the Commission has accepted Directorate General (DG) SANCO's proposed measures. Among those measures are: a requirement for combined warnings (picture and text) covering 75% of the front and the back of packs, general warning and information message on both sides of the packs, 'standardization' of packs (same shape and format) and possibility for member states to introduce 'plain packaging'. Such requirements are particularly likely to affect IP rights.
MARQUES, the organisation for trade marks in Europe, has already issued its own, equally monitory, press statement (see Class 46 here), and the Kats expect that there will be more.
Attention should be drawn to the fact that Commission's inter-service consultation (the internal process of the Commission under which a legislative draft is submitted to the services of the DGs) on DG SANCO's proposals commenced on 30 November, and only lasted for 12 days, closing on 11 December. Further, according to reports in European media, the President of the Commission, Jose Manuel Barroso, gave instructions to the DGs not to issue a 'negative opinion' so as not to block the revision process. It also appears that DG Internal Market and Services ('DG MARKT'), led by Commissioner Michel Barnier, did not submit any remarks during the inter-service consultation process which might have been seen as an effort to ensure due protection for IP rights, especially trade marks. If that is indeed the case, then the procedure adopted in the consultation process would seem to have been inadequate. It is DG MARKT that has the responsibility to ensure that legislative proposals emerging from the Commission will take into account the legitimate interests of owners of IP rights, and also the interests of consumers in distinguishing the products of different undertakings. That includes due recognition of treaty obligations on Member States, such as TRIPS, the Paris Convention, and the ECHR, intended to protect such rights. A number of EU and other international IP associations have expressed their concerns in these respects during the inter service consultation process.
It is now seems clear that IP rights have not received adequate consideration in the preparation of this draft Directive. The proposed provisions affecting packaging are clearly, it is suggested, prejudicial to IP rights, and in particular to the normal use of trade marks in the Single Market. In putting forward the proposals, the EU Commission is sending a negative message to industry. DG MARKT should instead be encouraging a competitive market, in tobacco, as well as other legal products. It has an important role to play, in motivating business to create and to innovate, and in particular to ensure that IP rights are duly protected. Enough has been said to Commissioner Barnier, by the organisations already mentioned, to alert him to the issues which the proposals raise. He seems so far to have ignored these issues. Industry is entitled to have expected otherwise.
The Commission's text will be conveyed to the National Parliaments of the EU Member State at the same time as being sent to the European Parliament and Council. It is therefore now in the hands of MEPs and member states of the EU to take the action that is needed, and to limit the unwarranted measures proposed by the Commission".
|"Cat to the chase"? DG MAR-KAT races|
to make its inter-service comments before
DG SANCO makes its decision