Deprivation of Trade Marks through State Interference in their Usage

• Date: 16 August 2019
• Pages: 1-24
• Published date: 16 August 2019
• Author: Owen H Dean
• Citation: (2013) IPLJ 1

DEPRIVATION OF TRADE MARKS

THROUGH STATE INTERFERENCE IN

THEIR USAGE

Owen H Dean

*

Chair of Intellectual Pr operty Law, Department o f Mercantile Law, Faculty of Law,

Stellenbosch Universit y

1. IntrODuctIOn

A global war is being waged against t he use of tobacco products, in particula r

the smoking of cigarette s.

The formal declaration of war was is sued by the World Healt h Organisation

(WHO) in the WHO Framework Convention on Tobacco Control (the

Convention),1 proclaimed in Geneva on 21 May 2003. According to the

WHO, the Convention was developed in response to the global isation of the

‘tobacco epidemic’, which has been facilitated, inter alia, t hrough global

marketing, tra nsnational tobacco advert ising, promotion and sponsorship,

and internat ional movement of counterfeit goods. The 169 signatory countries

undertook to st rive in good faith to ratify, accept or approve the Convention

and show political commitment not to u ndermine its objectives.2

The focus of the Convention is far removed from tr ade marks as such. In

Article 11 of the Convention, member countries are r equired to adopt effective

measures to ensu re that tobacco packaging a nd labelling do not promote a

tobacco product by any means t hat are false, misleading, decept ive or likely

to create an err oneous impression about its character istics, health effects,

hazards or emissions. Fu rthermore, any outside packag ing and labelling

should carry healt h warnings that should cover 50% or more of the principa l

display a reas.3

The Convention makes provision for Guidelines to be iss ued. In terms of

these guidelines:

Parties shou ld consider adopting m easures to rest rict or prohibit the use of logos, colours,

brand images or p romotional informat ion on packaging other th an brand names and prod uct

names displayed i n the standard colour a nd font style (plain packag ing).4

It must be emphasised that this st ipulation is not peremptory and that it is open

to member countries t o implement it or not. As will be discussed below, it is

* BA (Law) LLB LLD (Stellenbosch). Th is paper was prese nted by Professor Dea n at his Inaugu ral

Lecture a t the University of Stellenbo sch on 21 May 2013.

1 World Health Organis ation Framework Convention on Tobacco Control (FCTC) 2005.

2 World Health Organis ation http://www.who.int.

3 Article 11(1)(b)(iv).

4 World Health Organisation Fra mework Convention on Tobacco Con trol (FCTC) – Guidelin es

For Implementation 2013 para 46.

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(2013) IPLJ 1

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contended that this pa rticular guideli ne has given rise to the conception of a

faulty premise.

The guideline is motivated by t he not ion that –

This [plain p ackaging] may increase the not iceability and effectivenes s of health warnings

and messages, [to] prevent th e packaging from d etracting at tention from them , and [to]

address pac kage design techn iques that may suggest t hat some products ar e less harmf ul

than others.5

This motivation has contr ibuted to the formation of the faulty premise.

Many countries, i nclud ing Australia and South Africa, have given effect t o

the obligation prescribed in A rticle 11 of the Convention by passing legislation

that curta ils the advertising and promotion of tobacco products.

A new front in the war on tobacc o products has, however, now emerged.

There is an inter national move to give effect to the abovementioned (voluntary)

guideline by adopting legislat ion restricting or prohibiting the use of logos and

the like on the packagi ng of tobacco products. The intention is to al low only

brand names or product na mes, depicted in a plain manner, to be displayed on

the packaging of tobacco produc ts.

Australia is at the forefront of this new offen sive. It has adopted the

Tobacco Plain Packaging Act, 2011. The Aust ralian attack wil l doubtless set

an internat ional trend. Other countries, includi ng New Z ealand and Namibia,

are already working on legi slation to restrict the use of trad e marks on the

packaging of tobacco product s. It is likely that countries such as those of the

European Union and the Unite d Kingdom will follow suit.

2. australIan P laIn PackagIng legIslatIOn

The Australian Tobacco Plain Packaging Act, 2011 (the TPP Act), imposes

signicant rest rictions on the colour, shape and nish of retail pa ckaging for

tobacco products. It prohibits the us e of t rade marks on such packaging, other

than in a manner specically permitte d. It allows only the use of a brand name

or a business or company name for the relevant tobacc o product.6

The stated objectives of the TPP Act include the improvement of public

health by discouragi ng people from taking up smok ing, encouraging people

to give up smoking, discoura ging people from relapsing if they have given it

up and reducing people’s exposure to smoke from tobacco produc ts.7

The Tobacco Plain Packaging Regulations, 2011, made under the TPP

Act, proscribe embellish ments on cigarette packs and ca rtons. Packaging

is al lowed to be rectangular and to have only a mat nish, and the surface

must be the colour prescribe d by t he Reg ulations, in other words, a drab dark

brown. The use of trade ma rks on retail packaging of tobac co products is

prohibited, other than a s permitted by s 20(3)(a) of the TPP Act. It provides

5 World Health Organis ation (n 4) para 46.

6 See JT Internat ional SA v Commonwealth of Aust ralia; British Ameri can Tobacco Australasia

Limited & Ors. v The C ommonwealth of Austr alia 2012 HCA 43 (JT International) para [1].

7 JT International (n 6) para [4].

2 South African Intellectual Property Law Journal (2013) 1

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