Law Times

PAGE 8 Can government force plain packaging on cigarettes? Intellectual Property/Trademark Law Tobacco litigation FOCUS ON I BY KENNETH JACKSON For Law Times Toronto lawyer. It's something many in the t's just a matter of time before Canada follows a landmark decision at the Australian High Court to strip intellectual property off cigarette packages, says a it is a matter of time," says John Simpson, an intellectual prop- erty and trademark lawyer with his firm, Shiſt Law. "I think Canada was among tobacco industry fear and are trying to stop. "It is interesting and I think the first, if not the first, to have warnings cover more than 50 per cent of packing. Anti-smok- ing people are very powerful and I can certainly see this com- ing to Canada." Tobacco companies fought to overturn an Australian law requiring them to sell cigarettes in plain packaging, but the High Court rejected the chal- lenge last month. Starting in December, cigarette packages in Australia will be available in plain packaging with no logos and the brand names will have to appear in a standard font and position. British American Tobacco, Imperial Tobacco, Philip Mor- ris International Inc., and Japan Tobacco International all par- ticipated in trying to overturn a December 2011 law made by the Australian Parliament. They argued that the world's first plain-packaging law was unconstitutional amounted to an acquisition of intellectual property without adequate compensation, ac- cording to a Washington Post story. because it An Australian law requires companies to sell cigarettes in plain packages. Could Canada follow suit? some or all of the provisions of the act were invalid because they were an acquisition of property otherwise than on just terms," the court said in a summary of the decision. "At least a majority of the "The plaintiffs argued that court is of the opinion that the act is not contrary to s. 51 of the constitution." British American Tobacco "exacerbate an already signifi- cant illicit tobacco trafficking problem and would have other significant adverse unintended consequences including driv- ing down prices which would lead to increased smoking while reducing government tax rev- enue," the company claimed. It said it would continue to Plain packaging would only said it was disappointed with the ruling in a release posted on its web site. "We . . . remain convinced that the Tobacco Plain Packag- ing Act is not only a bad piece of law, but that it is one that will have many unintended conse- quences for years to come," said the company. take every action necessary to protect its brands and right to compete in global markets "based on the full legal use of our intellectual property rights." Simpson says the case would what that means is technically the right to exclude others from using from using it yourself," he says of the intellectual property ar- gument. But he suggests it's not clear your trademarks, not that trademarks are property in Canada. "I guess would have, too, is that trade- mark rights in Canada are not affirmative rights to do or say something as much as they are rights to exclude other people from doing or saying some- thing," says Simpson. "For example, the right to another point I involve different arguments in Canada. "That's interesting because prevent a competitor from us- ing a confusing trademark. The right to display a trade- mark, as the argument would go in Canada, comes from s. 2 of the Charter, not from the Trademarks act." Simpson notes it was con- sumer protection concerns that led to the creation of trademarks in the first place in order to make it easier for customers to know the source of what they were buying and avoid confu- sion. isn't new. The British govern- ment has held public consul- tations on the matter and the European Union is considering plain packaging. The Australian High Court The idea of plain packaging didn't publish its reasons for the ruling but is expected to release them later this year. It's not the end of the legal September 24, 2012 • Law timeS challenges in Australia, how- ever. Philip Morris Asia is chal- the court's opinion to fully as- sess [the] decision," said spokes- person Chris Argent in a release following the decision. "Regard- less, the legality of plain packag- ing, including whether Austra- lia will have to pay substantial compensation to Philip Morris Asia, remains at issue and will be considered in other ongoing legal challenges." Several other countries have lenging the plain packaging leg- islation under the 1993 bilateral investment treaty between Aus- tralia and Hong Kong. "We will have to wait to read challenged the plain packaging law at the World Trade Organi- zation as well. "We believe that Philip Mor- way to go before all the legal questions about plain packag- ing are fully explored and an- swered." ris Asia's investment treaty case and the WTO challenges are strong," said Argent. "As such, there is still a long LT Untitled-1 1 www.lawtimesnews.com 12-09-18 12:39 PM

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