Plain Packaging of Cigarettes and Constitutional Property Rights

The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation

“…Section 20 of the TM Act enacts that “the registered owner of the trade mark has […] the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered.” The terms “use of a trade mark in relation to goods” has been defined as “use of the trade mark upon, or in physical or other relation to, the goods” (TM Act, section 7). Thus, it would appear that when these provisions are considered together, section 20 of the TM Act entitles a registered trademark owner to use its mark upon, or in physical or other relation to, the goods or services for which the mark has been registered (Evans and Bosland, )…”

“…Thus, it would be necessary to assess as to what form of use is prohibited in relation to tobacco related goods, and determine if the prohibition could be regarded as a “limited exception.” In this regard it is important to note that the TPP Act does not prohibit all forms of use of a trademark. It only prohibits the use of trademarks on all forms of retail tobacco packaging (Evans and Bosland, ) . However, it must be noted that retail packaging and the information contained therein are crucial in reaching consumers, and it might be argued that although the type of prohibition is limited to only retail packaging, the prohibitive measure would not qualify as a “limited exception.” In fact, Heydon J's observation in JTI and BATA that “… in reality the area for the most valuable use of the marks is removed: connection with retail consumers as they purchase and use tobacco products” (paragraph 214) casts doubts on whether the Australian plain packaging legislation creates a “limited exception” to trademark rights.…”