The Tobacco Plain Packaging Act 2011 in Australia has set in motion a global debate. The act mandates that the design of tobacco products and their packaging is standardised so that only the brand name can be retained, in a standard typeface, colour and size.
Unsurprisingly, the passing of this act was met with strong resistance from the tobacco industry, both Down Under and abroad. Legal challenges have been raised at the World Trade Organization (WTO) to decide if there was a breach of the TRIPS Agreement, which guarantees intellectual property rights protection according to TRIPS standards.
In Malaysia, this international development is being monitored with much interest because the prospect of similar plain packaging regulations being implemented here is very real. Since 2008, mandatory pictorial health warnings have been imposed by the Control of Tobacco Product (Amendment) Regulations 2008 on tobacco products for sale locally. If implemented, plain packaging restrictions will further invade into the remaining space and strip such products of any distinguishing trademark identity, save for the mark itself in plain font.
To assist in the study of this contentious issue, the Malaysian Intellectual Property Association (MIPA) recently conducted a survey among its members. While the current stand taken by MIPA is neutral, the feedback received has revealed interesting insights among its diverse membership. To some extent, the views raised do mirror what has been similarly levelled on the international platform.
It is indisputable that smoking is adverse to human health. However, the question remains whether a government can prevent the use of a tobacco trademark as a matter of public policy when the mark is not misleading or contrary to public morals. How do we strike a balance between protecting public health and safety without intruding upon trademark use excessively or more than necessary? The implications for the trademark rights of tobacco stakeholders must not be side-stepped.
"It makes little sense to give a trademark its protection and at the same time remove its use on a lawfully available product."
Trademarks are recognised as a valuable asset of a manufacturer to distinguish its goods from similar wares of the competition and educate consumers on brand loyalty. Owners often invest heavily in protecting and using their brands. They are commercially rewarded when consumers are willing to pay more for such branded products, compared to competing offerings in the market.
Consumers rely on trademarks to distinguish products at a glance by way of fanciful designs, colours, images and logos on the packaging. If these identifying elements are removed, consumer loyalty may be affected because consumers may perceive plainly packaged products as likely to be similar in quality.
Consumer choice is best served by access to information but by homogenising all packaging to be plain will erode any distinguishing elements and the function of a trademark. Government measures affecting product labelling have typically involved adding information to the label, enabling consumers to receive more information to make an informed purchase decision, not less.
As for the public health reasoning, there is no concrete evidence to support any suggestion that plain packaging cigarettes will successfully discourage smoking or change smoking behaviour. Fundamentally, the WTO does not view trademarks as good or bad based on the nature of the product. It makes little sense to give a trademark its protection and at the same time remove its use on a lawfully available product, especially where such use is essential to fulfil core functions of a trademark. Plain packaging will enable counterfeit packaging to be even more easily reproduced, at lower cost and with fewer printing techniques needed.
It can be understood that the tobacco industry feels unfairly singled out to be deprived of its trademark rights. This sets a dangerous technical precedent for similar plain packaging regulations towards products that are deemed unhealthy for the public, such as alcohol products, processed food, etc. The current mandatory health warnings, disclosure of product contents or characteristics and refusing misleading signs or advertising should be more than sufficient to reasonably police the tobacco industry.
Lim Eng Leong is a trademark manager and legal counsel at Henry Goh. He can be contacted at: firstname.lastname@example.org
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