Trademark Rights under the Plain Packaging Regime and the New Tobacco Products Directive

Abstract: With the entry into force of the Second Tobacco Products Directive1 (hereinafter TPD), new labelling requirements for tobacco products are being introduced for ensuring greater protection of public health. Notably, the TPD harmonises minimum requirements of the WHO’s Framework Convention on Tobacco Control and its Guidelines, consisting of pictorial warnings and information about the harmful effects of smoking (Article 9 and 10 TPD), covering 65% of the tobacco package2, but also provides the possibility for Member States to introduce further more stringent measures (Article 24(2) TPD). Only brand names in a standard font are allowed to be displayed on a package with neutral colour without any trademarks.3 This thesis is specifically concerned with the effect of the TPD’s new labelling requirements (plain packaging) on the intellectual property rights (trademark rights) of the tobacco manufacturers. The justifications for the new limitations are considered from a broader EU perspective and from an Intellectual Property law one. The paper reflects on the character of protection that there is no deprivation nor expropriation of property, but a mere control of use and that the right conferred upon registration of a mark is ius excludenti alios and not a right to use. These justifications are based on examination of case law, legislation provisions and it is relied on the surveys approved by the WHO and made post-implementation of plain packaging in Australia. However, it is suggested that the use of trademarks has become an indispensable part of the economic reality and through plain packaging the trademark proprietors’ interests are being undermined. Consequently, it is argued that the new regime is oppressive towards the interests of the trademark proprietors and is not the most effective for attaining the public health objective, by drawing upon sociological and economical research. Finally, the thesis criticises a plain packaging regime as being detrimental to trademark owners and its potential spillover effect to other industries, the risk of increase of illicit trade and counterfeits, which will cause a whole area of intellectual property to become redundant.