INTA 2013: how plain packaging threatens trademark rights
The last day of the International Trademark Association’s annual meeting in Dallas saw a lively discussion about the threat from plain packaging initiatives to the exercise of trademark rights.
Carla Michelotti of advertising agency Leo Burnett Worldwide chaired the session, and opened by highlighting that plain packaging is not just a tobacco issue.
Plain packaging issues could arise wherever governments think of “using the trademark or trade dress with the goal of impacting behaviour,” Michelotti said.
Richard Gibley, from Gibley Legal in France, looked at the European situation, where he said “the very existence of trademark rights is being wiped out” in the name of public health through the proposed EU Tobacco Directive. The directive, which is in draft, limits the potential for tobacco companies to use their trademarks.
In light of the Court of Justice of the European Union’s Interflora decision, which acknowledged “an advertising function and an investment function” for a trademark, the restrictions proposed in the tobacco directive on using logos, for example, are particularly stern.
Of course, Australia already has plain packaging for tobacco products. Sarah Matheson of Allens brought the conference up to speed on the latest in the country, where a challenge to the Tobacco Plain Packaging Act at the High Court was recently rejected by judges.
Matheson noted an odd effect of the legislation, which doesn’t stop people owning or registering trademarks for tobacco brands, but severely limits their use.
Normally, “you have to be using or intending to use a mark to keep it registered”, but the legislation requires that you can’t use it. So to register a mark in the industry, you will have to demonstrate that you “would have used the mark” in the absence of the act.
The act is also the subject of proceedings at the World Trade Organization, and Matheson said that countries such as New Zealand may wait and see what happens there before setting equivalent legislation in motion.
Finally, Jim Davidson of US firm Polsinelli Shughart PC asked whether we might see plain packaging in the US. He said that it’s “important to view restrictions … in terms of a First Amendment analysis”.
Commercial speech and advertising is protected speech in the US, but comes with caveats. Case law says that “restriction on speech … or compelled speech … must directly advance a substantial government interest”. he said.
The Family Smoking Prevention and Tobacco Control of 2009, which imposes controls on packaging for tobacco, has been subject to two different circuit court decisions on its legality, and seems ripe for Supreme Court review.
But, Davidson said, attempts to circumscribe how companies can use their marks are nothing new in the US, and that alcohol and food are also targets.
If you’ve spent money developing your brand, he said, “to suddenly say … you can’t use that” raises serious First Amendment issues.
The panel called for trademark lawyers to make the case for trademark rights in this area, because, as Gibley said, “we really should care”.
