BREAKING NEWS: Ireland leads EU in plain packaging initiative

Laetitia Lagarde (Jacobacci Avvocati), Class 46 blogger and former guest Kat, is also a member of the plain packaging (PP) task force of INTA's Limits on Trademark Rights Committee. Here she makes a welcome guest contribution on a bit of breaking news:

Plain packaging in Ireland: towards a total ban on cigarette brands? 

Following the publication of the Tobacco Products Directive (TPD) on 3 April 2014, which entered into force on 19 May 2014,  EU Member States have two years to transpose its provisions in their national legislation. 
Politicians can also be harmful
to health: this is what
a plain-packaged one might look like
In the competition [though in a couple of days, all eyes will concentrate on this other competition] for promoting healthier regulations, Ireland is taking the undeniable lead by announcing today that its Health Minster James Reilly is seeking Cabinet approval for draft laws to compel tobacco companies to use plain packaging on all the products sold in Ireland, namely the Public Health (Standardised Packaging of Tobacco) Bill 2014. Said Reilly: “this is a significant step forward in our tobacco control policy and our goal of being a smoke free country by 2025.” 
After much debate on whether the Directive should make plain packaging mandatory in EU covered by yours truly here and here, the TPD ultimately provides for minimum requirements such as the size of health warning on packs, etc, with the possibility for Member States to implement stricter measures (see here). 
In the rest of the world,  the US bill proposal for graphic warning labels was rejected as unconstitutional (in R.J. ReynoldsTobacco Co v FDA) and Australia’s existing PP laws are being challenged before the WIPO on the basis of infringement of IP rights contained in international treaties such as TRIPS, in particular Article 15(4):  
“the nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark.” [Plain packaging that denied right to use trademark at all may result in a forfeiture on "non-use" grounds] 
or Article 20:  
“the use of a trademark . . . shall not be unjustifiably encumbered by special requirements, such as . . . use in the manner detrimental to its capacity to distinguish goods and services.” 
In Europe, plain packaging could violate the European Convention on Human Rights, such as Article 1 of the Protocol I,  on the grounds it would constitute an “expropriation of private property without just compensation”. 
So what will happen next with the Irish proposal? The Directive provides that if a Member State introduces stricter requirements, the bill must be notified to the EU Commission and a committee which will control that the provisions fulfill requirements set forth in Article 24, paragraph 2, before the bill is introduced: 

* justified on grounds of public health
 such measures shall be proportionate
* and may not constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States (i.e. it cannot be contrary to WTO or TFEU provisions.)
This legislative process will take a couple of months before the EU Commission issues an opinion. Meanwhile, France is announced to be the second EU country to propose plain packaging for cigarettes within this month, while it seems that the UK contender has pulled out of the race for the time being.
Brand owners outside the tobacco field are concerned with PP legislation spreading to other sectors. For example New Zealand was considering that possibility for soft drinks and sugary foods in the next few years. Regardless which side one is on regarding tobacco and its industry, all IP owners should monitor closely the developments in “PP or not to PP” legislations.

More from Ireland on the same subject here
Packaging competition here
Thanks, Laetitia! 
BREAKING NEWS: Ireland leads EU in plain packaging initiative BREAKING NEWS: Ireland leads EU in plain packaging initiative Reviewed by Jeremy on Tuesday, June 10, 2014 Rating: 5


  1. Hooray! Up the Irish! Éirinn go Brách! Good on yer, mites! Hit the filthgy weed where it hurts!

  2. In the post above you suggested that a plain packaging regime may be challenged as:

    “expropriation of private property without just compensation”.

    This always slightly confuses me, as I would suggest that it wrongly describes the rights that a trade mark owner has. Having a trade mark is a right to prevent others using that mark, a plain packaging law doesn't change this.

  3. I can't resist to point out that Australia's PP laws are being challenged before WTO, not WIPO...

  4. In its opinion on the TPD, it is to be noted the European Parliament's Committee on Legal Affairs specifically stated that the decision of the Australian High Court does not mean plain/standardised packaging would be in accordance with EU law. The Committee pointed out that Article 17 of the Fundamental Rights Charter and EU does not require 'acquisition' of property as a precondition for a breach of the right to property - a deprivation is sufficient. I agree, we need to get away from this 'acquisition' mindset.

  5. For those interested, the Ireland Standardized Packaging of Tobacco Bill was formally notified today to the European Commission which is available online here

    In a nutshell to anonymous n°2: the Bill forbids use of trade marks on packages (see 8-Main Content). A trade mark, if not used for 5 years for certain goods, is subject to cancellation.
    The ECtHR has interpreted the right of property as including IP. It could be argued that companies's right to peaceful enjoyment of property is contravened.

  6. Ireland has now become the first country in the European Union to prohibit the use of trademarks on tobacco packs. The Public Health (Standardised Packaging of Tobacco) Bill, 2014 was recently sent to the Irish President for signing. He has a discretion under the Irish Constitution to refer it to the Irish Supreme Court, which will verify whether the law is constitutional or not, namely whether it breaches the 'property' and 'freedom of expression' rights guaranteed under the Irish Constitution.

    Even if the constitutionality of the PP Bill is upheld by the Supreme Court, it may still fall foul of the 'free movement of goods' principle under the EU Treaty on the Functioning of the European Union and the EU Charter on Fundamental Rights. Compensation to the tobacco companies in the order of hundreds of millions of EUROS may well be likely outcome of inevitable legal challenges.


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