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Rights, privileges, legitimate interests, and justifiability: Article 20 of TRIPS and plain packaging of tobacco

2014; Springer Nature (Netherlands); Volume: 29; Issue: 3 Linguagem: Inglês

1520-460X

Mark Davison, Patrick Emerton,

World Trade Organization Law

I. INTRODUCTIONThe outcome of the WTO challenges1 * * * to the Australian legislation prescribing plain packaging for tobacco, in the context of trademarks, will almost certainly turn on the meaning of Article 20 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS or Agreement). However, to understand the meaning of Article 20, we must undertake a detailed assessment of the entire trademarks regime under TRIPS and basic principles underpinning TRIPS. Article 20 provides,The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirement prescribing the use of the trademark identifying the undertaking producing the goods or services along with, but without linking it to, the trademark distinguishing the specific goods or services in question of that undertaking.2This article addresses the interpretation of Article 20. We start by briefly identifying the salient features of the Australian plain packaging legislation and the nature of the problems that tobacco- control measures aim to address.We then discuss the nature of the entitlements that TRIPS confers upon trademark owners by reference to the widely understood and accepted proposition that property consists of a bundle of different relationships between different people in relation to the same thing: * 10 in this case, trademarks. We conclude that trademark owners enjoy a privilege of using their trademarks but we deny that trademark owners have a right or anything resembling a right to use their trademarks, and we specifically reject the suggestion that the entitlements of trademark owners to positive use of their trademarks exist on some spectrum between a right and a privilege. We further argue that owners' privileges of use of their trademarks are subject to restrictions on the basis of other legitimate interests. Our discussion of the theory of rights and privileges is then supported by a closer examination of the trademark provisions in the TRIPS Agreement which clearly support the proposition that Article 20 does not confer any right to use upon trademark owners, but rather deals with the circumstances in which their privilege of use may be restricted by governments.After concluding that trademark owners have a defeasible privilege of using their trademarks, we identify the respective interests of trademark owners and government for the purposes of identifying the key aspects of the relationship between trademark owners and government that determine the extent to which the privilege of use is defeasible. On the basis of this analysis, we conclude that Australia's plain packaging legislation is likely to be lawful under TRIPS.II. WHAT DOES THE AUSTRALIAN PLAIN PACKAGING LEGISLATION DO?For present purposes, the legislation has three major effects on retail packaging for tobacco. First, no non-word signs of any kind can be used other than a limited number of prescribed signs.3 For example, the background color of packaging is a drab brown.4 The prohibition on non-word signs necessarily includes a prohibition of non-word trademarks as the latter are a subset of the former. The prescriptions on use extend to controlling the size and shape of all aspects of packaging. For example, soft packs are prohibited and only standard flip top boxes can be used.5 The shape of the cigarette sticks is also prescribed.6 Second, word trademarks are permitted but they are limited to a particular font size and font or type face and are restricted as to the space on the packaging in which they can appear.7 The color of the word trademarks is also prescribed.8 Third, the packaging must have large text and graphic warnings that cover ninety percent of the back of the packaging and seventy-five percent of the front of the packaging. …