31 May 2012


'The Legitimacy of Plain Packaging Under International Intellectual Property Law: Why There is No Right to Use a Trademark Under Either the Paris Convention or the Trips Agreement', a cogent paper  by Mark Davison,  notes that
The Australian government has passed legislation for ‘plain packaging’ of tobacco products. The legislation will prohibit the use of logos, graphics and colour schemes on tobacco products. It will dictate the manner in which word trademarks are used and the colour of the packaging will be a drab brown. This chapter considers the arguments that there is a right to use trademarks under the Paris Convention or the TRIPS Agreement. In doing so, it also engages in a detailed analysis of Article 20 of TRIPS. It explains why no right of use exists under either Paris or TRIPS and the very limited role that Article 20 of TRIPS has in the context of the debate surrounding the legislation.
Davison concludes that -
1. There is no express or implied right to use a trademark under the Paris Convention or the TRIPS Agreement.

2. Defining such a right is effectively impossible. So too would be the definition of the exceptions to such a right.

3. The absence of a right of use under TRIPS Article 20 has implications for the meaning of 'encumbered by special requirements' within Article 20. A partial or total prohibition on use would not come within Article 20.

4. Such an interpretation of Article 20 is not only consistent with the wording of Article 20 but is also consistent with and supports the entire trademark regime under the Paris Convention and the TRIPS Agreement. It also validates those civil law systems that do not protect unregistered trademarks.

5. Only 'the use of a trademark in the course of trade' is relevant to Article 20 for the purposes of assessing the legality of an encumbrance by special requirements. The major encumbrance by special requirements on tobacco trademarks imposed by the legislation is outside the course of trade. The encumbrance by special requirements in the course of trade is limited to some special requirements for word trademarks.

6. The only issues that plain packaging of cigarettes raises under the TRIPS Agreement are therefore the limited encumbrances imposed on word trademarks in the course of trade and their justification for the purposes of Article 20 pursuant to Article 8 or on other grounds.
The work is available as a chapter in Public Health and Plain Packaging of Cigarettes: Legal Issues (Edward Elgar, 2012) edited by Mitchell, Voon & Liberman.