For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 16 April 2013

Plain packaging and trade marks: a view from Ireland

Alistair Payne (Matheson solicitors) introduced the afternoon session of today's Law Society of Ireland IP conference by giving a short explanation of "plain packaging" -- the make-up of packaging so as to create the appearance of being generic, relegating brand information to an insignificant extent.  While it is an assault on the product rather than the brand, it has implications for registered trade mark rights too. Initially aimed at tobacco products, the same policy has spread to, for example, food with high sugar content. It was therefore timely to discuss the topic in Ireland.

Opening the discussion, Mary Bleheane (FRKelly) demonstrated how, even as the law stands as present, there's not much room on Irish cigarette packets for traditional branding, logos and designs; this itself raises the question whether further proposed legislation is required. Mary then took the audience through the Australian experience (oft-discussed on this weblog), which unsurprisingly did not commend itself to smokers and which, following its apparent success, is now being considered for obesity-promoting foodstuffs too.

What of unintended consequences? With restrictions on branding and a high-tax environment, it's not surprising that one in three cigarettes in Ireland is sold without payment of excise tax, Mary observed.  The standardisation of packages also makes it easier for counterfeiters to reproduce. Mary then summarised the positive functions of trade marks under European Union law, pointing out that the use of trade marks for these purposes in respect of lawfully made and lawfully sold 'plain package' goods would be criminalised.

If domestic legislation prevents the effective use of a trade mark in order to perform its various functions, its validity will be subject to revocation proceedings for non-use. What's more, said Mary, restrictions on registration and validity can be contrary to the provisions of the Paris Convention on the Protection of Industrial Property and indeed various provisions of TRIPS -- particularly if it's an unjustifiable encumbrance on a trade mark's use. Since it has not been established that plain packaging falls within the TRIPS derogations in favour of the protection of public health, its use appears not merely wrong but unlawful.

Katfriend and one-time smoker Dr John Cahir (A & L Goodbody) spoke next on the Irish constitutional aspects of proposed packaging legislation.  "The whole debate over plain packaging is highly politicised", he observed, "so it's necessary to distinguish our personal views from our legal ones. I believe that trade marks are likely to be regarded as constitutionally protected forms of private property. There is therefore certainly an argument that plain packaging legislation is inconsistent with constitutional guarantees under Irish domestic law. However, on balance, I believe that a constitutional challenge is unlikely to succeed in Ireland because of the traditionally weak support given by the Irish courts to property rights that are impacted by forms of regulation.  Incidentally, he noted, chocolate cigarettes have already been banned completely in the State.

The word "confiscation" has been erroneously used in regard to government policy, particular regarding the Constitutional right not to have one's property confiscated. The State would argue that there is no confiscation here, only regulation and restriction of the use of one's intellectual property for the public good.  Within other realms, such as the subjection of private property in land to regulatory rules, the constitutionality of such laws has been consistently upheld. Unjust attacks on private property are also protected against, but the principle of proportionality applies. Also, no challenges based on constitutional property grounds were upheld when restrictions were placed upon the extent to which tobacco brands could be used in sponsorship and other forms of collateral marketing [this point was subsequently challenged in the discussion session].

John next turned to the international trade mark law treaties.  There was no internationally-recognised exclusive right to use a trade mark, he observed, but merely the right to prevent its use by others.  In short, he concluded, while there may be political or other reasons for opposing plain packaging measures, there are no legal barriers.

In the subsequent discussion, Shane Smyth (FRKelly) considered that revocation for non-use would not be an issue, since such non-use was beyond the trade mark owner's control; he also doubted that there was much mileage in arguments based on an absence of intent to use, this being a criterion for registration of a trade mark in only a minority of EU countries. Mary noted that there has been a ban on advertising at point of sale and elsewhere in Ireland for some years, so tobacco brands' advertising function is extinguished.

2 comments:

Niall Tierney said...

A factor that should not be overlooked is the effect that any legislative measure to bring in plain packaging would have on CTMs. In this regard, note the provisions of Article 16 CTMR which stipulates that a CTM, as an object of property, shall be dealt with in its entirety and for the whole area of the Community as a national trade mark registered in the Member State where inter-alia the proprietor has his domicile. In view of the unitary nature of the CTM, can any EU Member State legitimately bring in 'plain packaging' in the absence of a similar pan EU measure without having an effect on CTMs owned by proprietors in that Member State?

John Cahir said...

IPKat thank you for blogging on the Law Society event. I have given more coverage of the plain packaging issue over at:
http://www.irelandip.com/2013/04/articles/intellectual-property/plain-packaging-the-constitutional-eu-and-international-law-dimensions/

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':