Intellectual property arguments in tobacco industry legal challenges: lessons from recently concluded cases

Abstract

Background and challenges to implementation In recent years, intellectual property (IP) arguments have been central to legal challenges brought by the tobacco industry against measures implementing the WHO Framework Convention on Tobacco Control (FCTC). Many parties have faced IP-related litigation and threats under trade, investment, and domestic law, particularly in relation to measures to regulate tobacco packaging and labelling. These cases have raised novel legal issues that were previously the subject of academic commentary, but only limited case law. Intervention or response As these cases have concluded, a substantial body of case law has developed in the last five years on the relationship between WHO FCTC implementation and IP protections, affirming states´ right to regulate for public health purposes. Five recent cases were analysed and lessons for WHO FCTC implementation were drawn out. Results and lessons learnt The cases confirm that tobacco companies have no right under international law to use their trademarks to market their product, that IP protections are not absolute but subject to state regulatory power, and that IP treaties recognise states´ right to restrict trademark use for public health. As such, measures to implement WHO FCTC articles 11 and 13, including large graphic health warnings, plain packaging, and restrictions on brand variants, will not infringe international IP protections provided they do not affect registration rights or the negative right to prevent third parties from using trademarks. The case law also suggests actions states can take to strengthen their position in IP-related litigation, including explicitly preserving negative and registration rights, stating the public health purpose of a measure, and collating the best available evidence to support the measure. Conclusions and key recommendations A substantial body of jurisprudence now confirms that IP does not provide the scope of protection commonly claimed by the industry. Tobacco control practitioners faced with such arguments can be confident that they are unfounded. Country / measure / jurisdiction Australia - plain packaging (WTO dispute settlement system) Australia - plain packaging (High Court of Australia) Australia - plain packaging (investor-state arbitration) Uruguay - restrictions on brand variants and 80% graphic health warnings (investor-state arbitration) United Kingdom - standardised packaging (Court of Appeal of England and Wales) IP issues Obligation to provide certain trademark protections under TRIPS Protection of trademark as property under constitution Expropriation of trademark as investment under treaty; fair and equitable treatment re treatment of trademarks Expropriation of trademark as investment under treaty; fair and equitable treatment re treatment of trademarks Obligation to provide certain trademark protections under TRIPS and EU law; protection of trademark as property under European and UK law Decided in favour of Pending, reportedly Australia Australia, 2012 Australia, 2015 (dismissed at jurisdictional stage) Uruguay, 2016 United Kingdom, 2016 Positive right to use trademark? Pending, point conceded as 'no' by complainants No Not decided No No Public health justification Pending Not applicable Not decided Yes Yes [Recent cases raising trademark issues]

Keywords

• WCTOH