Is the UK's new plain cigarette packaging law a test case for trademarks?

Yesterday afternoon saw the government back the hotly debated move towards plain packaging for cigarettes here in the UK with the new packets set to be on shelves from next year.

Health campaigners have said they are delighted with the move, hailing the health benefits reduced cigarette sales will bring. But what does this mean for brand owners more widely? What happens to intellectual property rights when all brands are painted with the same ‘plain’ paintbrush?

The position of the tobacco companies is that, amongst other points, yesterday’s ruling amounts to an insufficiently justified attack on the valuable intellectual property rights they have built up with massive investment over decades, and in some cases more than a century.

In particular, it seems there is no clear conclusion about the health benefits that have resulted from a near identical Australian law being in effect for more than two years.

Some figures suggest that, there are now in fact more counterfeit cigarettes on the Australian market. Certainly the plain packaging makes it easier to make and disguise the counterfeits. No one knows what goes into those, so the threat to health from that is immeasurable.

It seems there would be no compensation paid for what seems otherwise to be a sequestration of the tobacco companies' assets. At least, none was offered and paid in Australia.

The companies also make the point that this conflicts with various international treaty obligations relating to trade marks.

No one seems yet to have produced results of a definitive empirical study that shows conclusively that such a change in the law would have the effect claimed, as compared, say, to just a display ban that puts the packs out of sight. The treaty obligations seem to require that before the equivalent of a nuclear bomb is used to wipe out legitimately owned IP rights.

These are all points that the European trade mark owners association (MARQUES) will be making on behalf of brand owners generally.

The concern there is that this is the thin end of the wedge as regards any goods that might be considered, by some legislators, as harmful. However, that concept can be a moving feast.

Diesel cars were once lauded as greener than petrol but now the opposite is believed and they are almost being demonised. Might we face de-branded diesel cars so as to make them less desirable? The same could potentially apply to salty or fatty foods, sugary drinks and any manner of goods or services that are deemed undesirable for whatever reason.

This would all be done in the name and greater interests of the general public, of course. Perhaps, some could argue, we should have plain packaging for political parties and politicians.

With these issues front of mind, a team at MARQUES in which I am involved is preparing a submission to be made on behalf of all European brand owners raising concerns about the wider implications the new laws may have on trade marks generally.

This will be submitted shortly to the The World Trade Organization (WTO) panel that is deciding the complaint that the Ukraine, and other countries, has filed against the Australian government.

If this is introduced in the UK too, it seems quite possible that the UK government will be involved in a similar complaint. They may well also face judicial review cases in the English courts from the tobacco industry, a reality that already seems set in motion judging from news reports this morning claiming British American Tobacco (BAT) has confirmed that it will indeed take legal action if the House of Lords gives its final approval to the proposals next week.

Interesting times are ahead.

Roland Mallinson is a partner in the intellectual property group at law firm Taylor Wessing