[Ip-health] IP-Watch: Ukraine WTO Trademark Dispute vs. Australia Tests Public Health Measures

thiru at keionline.org thiru at keionline.org
Thu Mar 15 05:51:11 PDT 2012


Ukraine WTO Trademark Dispute vs. Australia Tests Public Health Measures

Published on 14 March 2012 @ 7:21 pm

By William New, Intellectual Property Watch

Ukraine yesterday filed a World Trade Organization dispute settlement case
against Australia for its 2011 law requiring plain packaging on tobacco in
an effort to address the severe public health problem related to its use.
The case could represent an important measure of the power of trade
interests versus public health decisions by governments.

Ukraine argues that Australia’s law violates the 1994 WTO Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as
the Technical Barriers to Trade agreement and the General Agreement on
Tariffs and Trade (GATT), which generally covers trade in goods.

The dispute is number DS434 and it is expected to be available soon on the
WTO website here.

The Ukraine case filed on 13 March targets Australia’s Tobacco Plain
Packaging Act 2011, its Trade Marks Amendment (Tobacco Plain Packaging)
Act 2011, and related regulations. Filing the case first means the two
sides hold consultations to see if they can settle their differences on
their own. The two sides have 60 days to settle the dispute bilaterally,
after which the complainant can ask the establishment of a panel, which is
done at a Dispute Settlement Body meeting.

The issue was discussed among WTO members at the last meeting of the WTO
Council on TRIPS (IPW, WTO/TRIPS, 28 February 2012). At that meeting,
countries restated positions they had taken in the past several TRIPS
Council meetings, according to sources. Only Chile was said to have
shifted positions, moving slightly more toward the Central America and
Caribbean countries that have opposed regulations on tobacco out of
economic interests.

The minutes for past TRIPS Council meetings that include detailed
explanations of positions are WTO documents IP/C/M/66 and IP/C/M/67.

The World Health Organization has invited health and trade officials in
Geneva missions to attend a workshop on 15 and 16 March on “trade-related
issues relevant to implementation of the WHO Framework Convention on
Tobacco Control” (FCTC). The event aims “to promote the sharing of
knowledge and information” among parties to the convention of
tobacco-control measures taken pursuant to the convention. It also will
“review ongoing trade and investment concerns in this area.” The event
will include panels and available experts.

The WHO also published in time for the meeting its Global Report on
Mortality Attributable to Tobacco, available here.

WHO has addressed the TRIPS Council on the global problem of smoking, and
has said plain packaging is covered under recommendations of the agreed
tobacco convention. The 2005 convention has 179 members.

In a 2010 declaration agreed in Punta del Este, Uruguay, convention
parties affirmed their “firm commitment to prioritize the implementation
of health measures designed to control tobacco consumption in their
respective jurisdictions” and their “right to define and implement
national public health policies, pursuant to compliance 
with the WHO FCTC.”

At the February TRIPS Council, sources said Australia again addressed
questions about its new law passed on 21 November and expected to take
effect on 1 October 2012 for Australian produced products, and 1 December
2012 for all products. The Australian legislation included amendments to
extend implementation time, and provide two more weeks for retailers to
finish selling their existing non-compliant packages. It also was amended
to address a technical concern of tobacco companies to allow rounded
corners to be used inside the top of cigarette packs.

Australia also explained to the TRIPS Council the extensive research,
analysis and consultation process that was conducted in the lead-up to the
passage of the law. It said it is confident that as part of a broader
initiative to address tobacco use, the new law will be effective in
reducing smoking.

Australia, which in other contexts is seen as one of the most vigorous
nations on IP rights protections, restated its full commitment to
international IPR obligations. It said the new law was amended to ensure
trademark owners receive full protection for their trademarks and can
register trademarks. Non-compliant packages will be allowed to imported
and then repackaged before first sale.

Countries that have spoken in favour of countries’ right to use
flexibilities in the TRIPS Agreement for public health purposes including
tobacco control included Brazil, Chile (now shifting), China, India, the
EU and Switzerland. Supporters of Australia were New Zealand, Norway and

The 2001 Doha Declaration on TRIPS and Public Health reinforced countries’
right to take public health measures on behalf of their public interest.
Brazil and others have raised that as well as the Doha Declaration, and
TRIPS Article 8, which it has said specifically authorises WTO members to
adopt measures needed to protect public health and nutrition in addition
to measures to promote the public interest in vital sectors for social,
economic and technological development.

Countries said to be in opposition to the Australian law include: Cuba,
Dominican Republic, El Salvador, Honduras, Mexico, Nicaragua, Nigeria and

At the February TRIPS Council, the Dominican Republic again asserted the
inconsistency of the Australian law with TRIPS, and arguing it would
“destroy” the intellectual property rights and limit information for
consumers. It noted the product is legal to sell in Australia, and that
the registered marks, geographical indications and other elements of the
package play an important role in providing information. It suggested
other measures might be more viable to address the health concerns of

Industry Fuming

The tobacco industry has already filed two lawsuits against Australia, one
through a bilateral treaty between Hong Kong and Australia, and one within

A tobacco industry representative told Intellectual Property Watch,
“Australia’s plain package tobacco measure is a very tough challenge on
tobacco industry and growers of tobacco all over the world. All eyes are
now on the issue as it will be taken to WTO dispute settlement by the WTO
members who do not share Australia’s approach towards tobacco regulation.”

“The plain packaging restriction is of relevance to other industries, like
alcohol, food and soft drinks, which may well be next on the list for this
type of regulations,” the industry representative said. “The enforcement
of the Australian measure will result in denial of trademark rights to
tobacco industry which amounts to expropriation of assets and is
incompatible with international trade and investment rules. This will have
severe impact on the tobacco industry as a whole and growers of tobacco
leaf for whom this activity is essential for their subsistence.”

Ukraine, a tobacco producer, joined the WTO in 2008. Ukraine itself was in
the past the target of actions for intellectual property rights violations
by countries such as the United States, and it continues to be of concern.

The plain packaging issue was discussed in TRIPS Council in February 2012,
October 2011, and June 2011.

It was discussed in the TBT Committee in November 2011 and June 2011.

Rachel Marusak Hermann contributed to this story.

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