Plain packaging of tobacco products and trademark

As anti-smoking sentiment grows throughout the world, governments have increased restrictions on tobacco companies limiting the way they express these brands through advertising and packaging. Presently, governments of more than 100 countries have decided to include mandatory pictorial health warnings on tobacco packs to increase awareness about the health issues related to smoking. In New Zealand and Australia these warnings cover 30% of the front and 90% of the back of the packs. This appropriation causes loss of brand to the companies and no country compensates them for the same which disables these companies from using their most important asset, that is trademark. 

In this blog, we will particularly focus on the concept of plain packaging and how it can affect the trademarks of brands dealing in tobacco products.

What is plain packaging?

Plain packaging as the name suggests would require these tobacco brands to remove all colours, brand imagery, corporate logos and trademarks allowing the manufacturers to only print the brand name in the prescribed size, font and place. This is in addition to other features like the pictorial health warnings and other legally prescribed information of the product such as toxic constituents, tax paid seals and packaging contents.

Further, the pack can only use a standard cardboard texture. The size and shape of the pack along with the cellophane wrappers will also be regulated to prevent novel varieties of the pack shape and covers that hide the on-pack pictorial health warnings.

Plain packaging would cover the interior of the pack as well as the cigarette itself, restricting the manufacturers from using colours, banding, markings, smells or experimenting with different sizes and lengths to make the cigarettes more interesting and appealing. Thus, the purpose of plain packaging is to standardise the appearance of all cigarettes and reduce their status signalling roles and appeal to the consumers.

Trademark law’s objection to plain packaging

The tobacco industry is heavily reliant on trademark protection to communicate their brand to the consumers and differentiate themselves from other competitors. The argument against plain packaging is that it violates the minimum obligations for protection of intellectual property under international trade agreements like TRIPS, NAFTA and the Paris Convention. Moreover, these manufacturers argue that since trademarks can only be registered if they are used, plain packaging would dilute their trademarks and eventually they may lose the trademark protection that is afforded to their logos and symbols. 

Plain packaging would violate Article 20 of the TRIPS agreement which states that use of the trademark in trade is not to be unjustifiably encumbered by special requirements such that it loses its capability of distinguishing its goods from others. But however this logic is questionable as the purpose of a trademark is not merely to protect private property but also to support the broader public interest in providing accurate information to its consumers. 

Hence, it remains to be seen whether regulators will bring about plain packaging for public good or will the tobacco manufacturers make a strong case for trademark infringement.