Lakshmi Kumaran & Sridharan AttorneysAn ISO 9001 / 27001 certified law firm

TRIPS agreement does not create substantive rights – Canada on WTO challenge to plain packaging rules

22 May, 2015

Canada submitted its views as third party on the issue of plain packaging measures introduced by Australia as regards tobacco products. The Australian High Court had upheld the validity of the statutory provisions which mandate all cigarettes packets and cartons to be uniform or in identical colours with about 25% of the surface being available to display company name, brand name, etc. But the measures are under challenge in the WTO on the ground that due protection to IPR has been denied.

Canada submits that regulatory measures that are not acts of competition fall outside the scope of TRIPS Article 2.1 and Article 10b is of the Paris Convention and that there is no right to use a trade mark under various articles of the TRIPS agreement. It argues that only acts of commercial parties constitute an act which entails unfair competition and regulatory measures put forth by the government are not included under the same. Further Article 15.1 of the TRIPS agreement does not impose any obligation but only provides the definition of what may (in this case signs) constitute a trade mark  and the only  obligation under Article 15.1 is for members to ensure that signs that satisfy the definition are eligible for trademark registration. Therefore Article 15.1 is violated only when there is restriction as to eligibility for registration.

As per Canada’s interpretation, the right to use a sign or trade mark cannot prevent members from banning any goods or service and in any case plain packaging uses the TRIPS flexibilities relating to public health. Citing the negotiating history, Canada says that the agreement includes only the right to exclude third parties from using the trade mark and does not include an owner's right to use the trade mark.
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