Table 1

Legal advice on intellectual property protection provided to the tobacco industry

DateSourceAuthorityLegal advice
March 1991Ulf BernitzParis ConventionUnknown25
March 1991Gunnar KarnellSwedish Act on Trademarks and Instrument of Governments Act‘The right to a trade mark is personal property. It is, like other intellectual property rights, encompassed by the protection of property against expropriation and the like without compensation…’26
May 1992Clayton UtzAustralian Trademarks Act‘The Trademarks Act may be constructed so as to confer on the registered holder of the trademark the right to exclude others from the use of that trademark. However it does not in our opinion, intend to control the circumstances in which the holder of a registered trademark may himself use that mark.’33
Aug 1992Clayton UtzParis Convention‘The Company has also considered the issue of whether the proposed restrictions would be in breach of the Paris Convention on industrial property and the Australian Trade Mark Act. We are advised that there is no basis for any legal challenge against State and Territorial Governments on these grounds.’34
Dec 1992Clayton UtzGATT and Paris Convention‘In our opinion, the Industry would not be able to rely on the provisions of the Paris Convention, and the GATT to challenge the proposed legislation.’33
July 1993DTIGATT and TRIPS‘Registration of a trade mark does not confer the right to use it … It would not be a breach of the TRIPS code for a country to have a complete ban on the sale of tobacco. Secondly, the registration of a trade mark for tobacco cannot prevent the operation of other regulations, for example, laws requiring health warning on packets.’53
Dec 1993John LuikGATT and TRIPS‘While I think the GATT/TRIPS process provides a useful entre to this problem [intellectual property], I believe that its ultimate usefulness might well be limited.’61
April 1994Plain Pack GroupNAFTA‘There appears to be no direct redress available to companies under NAFTA as regards product labeling.’53
May 1994Plain Pack GroupGATT and TRIPS▸ ‘Current conversations and treaties afford little protection ▸ GATT/TRIPS little joy’56
July 1994WIPOParis Convention‘The countries of the Paris Union are bound to admit trademarks for registration notwithstanding the nature of the goods to which they are applied (Article 7). However, the Paris Convention does not contain any obligation to the effect that the use of a registered trademark must be permitted.’64
August 1994WIPOParis Convention‘Countries party to the Paris Convention remain free to regulate or prohibit the sale of certain types of goods, and the fact that a mark has been registered for such goods does not give the right to the holder of the registration to be exempted from any limitation or prohibition of use of the mark decided by the competent authority of the country where the mark is registered… In conclusion, it does not seem that Article 7 of the Paris Convention could serve as a basis for challenging existing or planned requirements of Paris Union member states regarding the plain packaging of tobacco products’.79
  • DTI, Department of Trade and Industry; GATT, General Agreement on Tariffs and Trade; NAFTA, North American Free Trade Agreement; TRIPS, (Agreement on) Trade Related Aspects of Intellectual Property Rights; WIPO, World Intellectual Property Organisation.