On Tuesday, the Ukraine initiated a formal trade dispute with Australia through the WTO’s Dispute Settlement System. The Ukraine alleges that Australia’s Plain Packaging Act, which provides that “no trade mark may appear anywhere on a tobacco product” violates TRIPS (and other trade agreement) rules on trademarks.
Ukraine’s Request for Consultations claims that Australia is not abiding by the following trade obligations [direct quote]:
- Articles 1.1, 2.1, 15, and 16 of the TRIPS Agreement and Articles 6quinquies, 7, and 10bis of the Paris Convention as incorporated in the TRIPS Agreement because the measures, which discriminate against tobacco-related trademarks based on the nature of the product, fail to give effect to the trademark holder’s legitimate rights with respect to the trademark, fail to accord effective protection of the trademark “as is,” and fail to prevent acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
- Article 20 of the TRIPS Agreement because the measures constitute an unjustifiable encumbrance on the use of trademarks;
- Article 1 of the TRIPS Agreement because Australia has failed to give effect to Article 20 of the TRIPS Agreement in Australia’s domestic laws and regulations;
- Article 27 of the TRIPS Agreement because by regulating the physical features of the patented packs, the measures prevent the normal exploitation and thus the enjoyment of the patent rights for tobacco products in a manner that discriminates based on the field of technology;
- Article 2.2 of the TBT Agreement because the measures constitute an unnecessary obstacle to trade and are more trade restrictive than necessary to achieve the stated health objectives; and
- Article III:4 of the GATT 1994, Article 3.1 of the TRIPS Agreement, and Article 2.1 of the TBT Agreement because the measures fail to respect the national treatment requirement set out in these provisions by not providing equal competitive opportunities to imported tobacco products and foreign trademark right holders as compared to like domestic tobacco products and trademark right holders.