Expropriation or Deprivation: The Effect of Proposed Tobacco Plain Packaging Legislation in South African Intellectual Property Rights

• Citation: (2016) IPLJ 47
• Pages: 47-63
• Published date: 24 May 2019
• Date: 24 May 2019
• Author: Stephanie Zietsman

47

EXPROPRIATION OR DEPRIVATION:

THE EFFECT OF PROPOSED

TOBACCO PLAIN PACKAGING

LEGISLATION IN SOUTH AFRICA

ON INTELLECTUAL PROPERTY

RIGHTS

 

  

Debates around int roducing plain packaging mea sures for the South Afr ican

tobacco industr y have been growing in int ensity recently.1 These measures

would essentially restrict t he rights of tobacco companies to d isplay their

trademark s on cigarette packs,2 which is i ntended to decrease dema nd for

their products and ult imately reduce tobacco consumption.3

In terms of the legislation i mplementing these measure s, when does state

        

a deprivation or an expropriat ion, and would it stand up to constit utional

scrutiny? Th is paper will attempt t o answers these questions by exam ining

the implications of proposed plain packag ing legislation in South Africa, and

where it falls on the expropriation /deprivation spectru m. This will be done

with a particula r emphasis on principles of trade mark law, the promotion of

public health, and most impor tantly, the constitutional ity argume nt.

At the outset, it is conceded that th is is a complex issue and that both

arguments for and agai nst it have their merits. Ulti mately, what is at play

is an intersection of public health a nd intellectual proper ty rights.4 Des pite

compelling argu ments from intellectu al property law yers and tobacco

companies,5 it is contended that the implementat ion of plain packaging

legislation in South Africa would not be con sidered an arbitrar y deprivation

of p rop ert y.6 Nor would it amount to an unlawful exprop riation.7

 LLB, University of Ca pe Town.

1 R Sikwan e ‘Plain packagin g debate heats up’, available at htt ps://www.ensafr ica.com/news/

plain-packa ging-debate -heats-up?Id=1541&STitle=IP%20ENSight (viewed on 11 Apri l 2016).

2 Ibid.

3 Ibid.

4 S Frankel & D Ger vais ‘Plain packaging a nd the interpret ation of the TRIPS Ag reement’ (2013)

46 Vanderbilt Journ al of Transnational Law 5 6 5.

5 OH Dean ‘Deprivation of t rade marks throug h state interference i n their usage’ (2013) 1 South

African Intell ectual Propert y Law Journal (IPLJ) 3.

6 L Harms ‘Plain p ackaging and its imp act on trademar k law’ (2013) 46 De Jure 2 397.

7 Ibid.

(2016) IPLJ 47

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   

After the implement ation of the Constitution of the Republic of South

Africa, 1996 (the Constitution), there was some unc ertainty a s to the place

of intellectual proper ty in our law and the prote ction to which intellectual

property r ights holders were entitled.8 This is becau se there is no express

mention of intellectual prope rty in the Const itution. Section 25(4)(b) merely

states that ‘proper ty is not limited to land’.9         

extent in In re: Certicat ion of the Constitution of the Republic of South Af rica

(First Certication case)9 and has been dealt with fur ther in subsequent cases.

2.1  Incorporeal property i n terms of section 25 of the Constitut ion

In the First Certication case, t he Constitutional Cour t was tasked with

determin ing the validity of the Constit ution.10 Despite contestations that the

Constitution did not provide adequ ate protection of intellectu al property

        

the broader banner of prope rty in s 25.11 The Court held that it is not standard

to include a separate const itutional provision for intellectual p roperty.12 A

           

according to inter national human rights standa rds.13

After the First Certica tion case, Dean initial ly expressed the view that

the constitutional prot ection granted to i ntellectual proper ty by s 25 was far

from exte nsive.14 He argued that the section clearly focused on i mmovable

property (ie land) and t he deprivation and expropriat ion of such property.15

In his opinion, s 25(4)(b) was merely added as an after thought to include

property i n general.16 He therefore felt that it was an incorrect decision not to

recognise intellect ual property as an i ndependent fundamental hum an right in

a separate constitut ional provision.17

Laugh It Off v South Africa n Breweries,18 which dealt with trade mark

infringeme nt, was another impor tant case in deter mining the scope of

protection afforded to intellect ual propert y in South Africa.19 In th is case,

South African Brewer ies (SAB) alleged that a Laugh It Off t-shirt de sign was

8 AJ van der Walt AJ & R M Shay ‘Constitution al analysis of intellec tual propert y’ (2014) 17 PELJ

1 57.

9 In re: Certifi cation of the Constit ution of the Republic of S outh Africa 1996 (4) SA 744 (CC).

10 First Certification case (n9) par a [75].

11 Ibid.

12 Ibid.

13 Ibid.

14 OH Dean ‘The case for t he recognition of intellec tual property in t he Bill of Rights’ (1997) 60

Tydskrif vir Hedendaagse Romeins-Hollandse Reg 105 106.

15 OH Dean ‘Intellect ual proper ty and the Con stitution’, available at htt p://blogs.sun.ac.za /

iplaw/2015/07/14/intellectual-prope rty-and-t he-constit ution (viewed on 16 April 2016).

16 Ibid.

17 Ibid.

18 Laugh It Off P romotions CC v South Af rican Brewerie s International ( Finance) BV t/a Sabmark

Internatio nal & another 2006 (1) SA 144 (CC).

19 M du Bois ‘Intellec tual propert y as a constitutio nal property r ight: The South Afr ican approach’

(2012) 24 SA Merc LJ 177.

48 South African Intellectual Property Law Journal (2016) 4

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