Tobacco Trademarks in Peril: Australian Courts Can’t Be Bothered (original) (raw)
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Australian Plain Packaging Law, International Litigations and Regulatory Chilling Effect
European Journal of Risk Regulation, 2014
Introduction of plain packaging law by Australia in 2012 was met with strong opposition from transnational tobacco companies (TTCs). While advocates of the law see it as a logical step in governmental efforts to curb tobacco use and improve public health in Australia, TTCs claim that the new law is scientifically unsound, overly intrusive and that it infringes a number of international law provisions relating to trademark and property protection. Some TTCs, either directly or indirectly,have decided to test the Australian measure before international tribunals. Although, these challenges are connectedwith interests held by TTCs in Australia, they should be seen as a part of a global struggle against new emerging international standards in the field of tobacco control. In this context, it is also submitted that these litigations can produce “regulatory chilling effect” with respect to activities of other states. This article aims to look at this problem more closely. The text proceeds as following. The subsequent part provides a brief overview of the new Australian plain packaging law and international legal proceedings that have been instituted against that country. The third part analyses the problem of regulatory chilling effect in the context of these two international litigations. The last section concludes.
This chapter uses the Hong Kong-Australia BIT as a case study to illustrate how plain packaging measures are likely to fare in international investment law. It examines in detail the investment claim made by Philip Morris Asia Limited ('PMA') against Australia under the BIT, including matters associated with the jurisdiction of an established arbitral tribunal, the relevance of potential local remedies and the nature of PMA's investment in Australia. In assessing Australia's options in light of the PMA claim, it is concluded that PMA likely has a relevant investment to found jurisdiction in a claim under the BIT, and that Australia would have difficulty extinguishing such a claim. In light of this, Australia may wish to consider modification of some of its BITs to clarify that the parties never intended public health measures to be caught by investor-State claims. It is further argued that the only breach of the Hong Kong-Australia BIT that PMA might be able to make out relates to expropriation, which is countered by evidence collected by the Australian government concerning the health effects of plain packaging. In the event of an adverse award against Australia, PMA may face enforcement difficulties for reasons of public policy and sovereign immunity.
BOXED IN? AUSTRALIA'S PLAIN TOBACCO PACKAGING INITIATIVE AND INTERNATIONAL INVESTMENT LAW
This article uses Australia as a case study to identify the issues that may arise in ensuring compliance of plain tobacco packaging measures with international investment law. It explains how the tobacco industry could use investor-state dispute settlement under Australia's investment protection agreements, as Philip Morris Asia Limited has done in its claim under the Australia-HK bilateral investment treaty. It then considers whether the tobacco industry would satisfy the threshold requirement of having made a relevant investment, before considering whether plain packaging could be considered an expropriation or a breach of the fair and equitable treatment obligation or another investment standard. The article concludes that Australia has strong arguments that plain packaging is consistent with its international investment obligations.
The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation
(2013) 16 Journal of World Intellectual Property 197
The use of tobacco entails negative health consequences. In fact, it is reported that had the ill effects of tobacco been known much earlier in time, tobacco would have been a banned substance. Yet, in today's context tobacco has become part of legitimate trade, and the livelihoods in countries that export tobacco heavily depend on trade in tobacco. In the circumstances, could governments intervene on health and public policy grounds and regulate the manner in which tobacco products are marketed and sold? If so, to what extent? These are precisely the questions that fuel the gruelling dual between tobacco companies and health conscious countries, such as Australia that has recently enacted legislation making mandatory the plain packaging of tobacco products from December 2012. The Australian legislative measure, namely the Tobacco Plain Packaging Act 2011 (Cth), is currently under attack in several fronts, including the World Trade Organisation, though recently the Australian High Court upheld the constitutionality of the plain packaging legislation. The purpose of this paper is to approach the question of the legality of government intervention in totally prohibiting the striking elements of tobacco packaging from a purely international trademark law point of view. First, the paper identifies the scope of trademark protection as set out in the Agreement on the Trade Related aspects of Intellectual Property Rights (“TRIPs”) and then goes on to analyse the Australian plain packaging law in the context of its own trademark legislation. Thence, the paper considers whether the Australian plain packaging legislation complies with the core provisions on trademark protection enshrined in TRIPs, and lastly provides a possible compromise to reconcile the competing interests.
Australia’s introduction of plain packaging of cigarettes, which is a world first, has prompted international legal challenges under both the World Trade Organization (WTO) and the bilateral investment treaty between Australia and Hong Kong. These international legal challenges raise questions as to how scientific evidence used to justify public health measures is, or should be, treated in international economic law. For instance, what is the significance of uncertainty or gaps in scientific knowledge? How should a tribunal or panel treat divergent scientific opinions? What quantity and quality of scientific evidence is required to establish a causal connection between a measure and its objectives under the applicable standard of proof? Certain features of Australia’s plain packaging laws make these questions particularly pertinent: they will be operating amongst a suite of other measures directed at the same objective; they will be implemented in a context where external social forces may seek to undermine their impact; and this is the first time they have been tried anywhere in the world. These factors make it difficult to measure their effectiveness in the real world with precision. However, despite these difficulties, we find that both, investor-State tribunals and WTO panels and the Appellate Body have demonstrated a welcome degree of flexibility in how they approach scientific evidence. That said, a number of key areas of uncertainty remain in international economic law, and the disputes over plain packaging could play an important role in bringing clarity to those areas.
The John Marshall Review of Intellectual Property Law, 2013
Plain packaging, a new tobacco control tool being considered by a growing number of countries, mandates the removal of all attractive and promotional aspects of tobacco product packages. As a result of plain packaging, the only authorized feature remaining on a tobacco package is the brand name, displayed in a standardized font, size, color, and location on the package. At issue is the meaning of "use" of trademarks on plain packaging, and whether plain packaging amounts to the creation of an invalid encumbrance. The tobacco industry and other regulated sectors (including wine, fast-food, and pharmaceuticals) also believe that plain packaging jeopardizes trademark rights and contravenes certain Constitutional provisions. In particular, they argue that governments do, and are, in fact, capable of "acquiring," property, or that governments could be construed as "taking" property on unjust terms, contrary to Constitutional guarantees. The tobacco industry's efforts to fight plain packaging in the courts have, however, proven futile thus far-particularly in Australia. This article, after introducing the reader to the dawn and rationale of plain packaging from a quasilegal and marketing perspective, examines the compatibility of normative arguments for plain packaging within the international framework for trademark protection (as preserved in the TRIPS Agreement). It then looks at the way in which these arguments and that framework have shaped the constitutional validity of plain packaging of tobacco products in the United States and Australia. In drawing on these jurisdictions that, alongside the European Union, incorporate rather aggressive tobacco control legislation, this paper highlights the nuanced geographic and legal contexts that complicate global regulatory control, which play an important role in advancing global public health in the face of trade-related objections. Finally, this paper proposes methods for dealing with current legal challenges to global tobacco control regulations and suggests that there are strong arguments to deny private entities that seek to establish a successful case by purporting to invalidate plain packaging legislation.
Recent challenges to tobacco packaging measures brought under international investment law shed light on a variety of intellectual property issues. This chapter focuses on the intellectual property aspects of two related disputes: the claim brought by Philip Morris Asia Ltd (Philip Morris Asia) against Australia under the 1993 Agreement between the Government of Hong Kong and the Government of Australia for the Promotion and Protection of Investments (Hong Kong–Australia Bilateral Investment Treaty (BIT)) and the claim brought by FTR Holding SA (Switzerland) (FTR), Philip Morris Products SA (Switzerland) (PMP) and Abal Hermanos SA (Abal) against Uruguay under the 1988 Agreement between the Swiss Confederation and the Oriental Republic of Uruguay concerning the Reciprocal Promotion and Protection of Investments (Switzerland–Uruguay BIT). Both of these disputes involve government adoption of regulatory measures that directly affect the branding, labelling and packaging of tobacco products. They also relate to aspects of the World Health Organization Framework Convention on Tobacco Control (WHO FCTC), negotiated under the auspices of the World Health Organization (WHO), to which Australia, Uruguay and Hong Kong are parties (with Switzerland as merely a signatory). Part 2 of this chapter provides a brief overview of the tobacco packaging measures implemented by Uruguay and Australia. While these legislative schemes share the objective of improving public health through tobacco control, they vary in the way they pursue that objective.
Face Off: Assessing WTO Challenges to Australia's Scheme for Plain Tobacco Packaging
Australia is set to become the first country in the world to implement a scheme mandating the plain packaging of tobacco products. The outcome of the scheme in Australia in the coming months and years will establish a critical precedent for both tobacco control interests and the tobacco industry. Among the various legal and other avenues that tobacco companies and others are pursuing in challenging the scheme, the claim is frequently made that the scheme violates Australia’s obligations as a Member of the World Trade Organization. However, a careful analysis demonstrates that plain tobacco packaging as envisaged by Australia is consistent with all relevant World Trade Organization agreements.
As other forms of advertising have been restricted, packaging has be-come an increasingly important way for the tobacco industry to attract new smokers. As part of its efforts to reduce smoking and its harmful effects, Australia became the first country to require standardised packaging for tobacco products (referred to as plain packaging). Predictably, this drew a strong response from the tobacco industry, which has launched or funded a series of challenges to Australia’s health measure. One arena for these legal challenges is the World Trade Organization (WTO). The WTO complaints concerns WTO obligations related to different agreements, including the Agreement on Technical Barriers to Trade (TBT) and the General Agreement on Tariffs and Trade (GATT), but the area that has generated the most interest concerns the WTO obligations concerning intellectual property contained in the Agreement on Trade Related-Aspects of Intellectual Property (TRIPS Agreement). They key question here is to what extent international trademark law constrains public policy measures affecting the use of a trade mark.