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?