Plainly Winning - Australia Wins Plain Packaging Challenge at the WTO

Plain packaging seems to be a nigh inevitability in the current legislative climate, especially with countries pushing for stricter laws surrounding cigarettes and their marketing. This blog has discussed the challenge against the Australian Tobacco Plain Packaging Act 2011 in the WTO and in Asia (discussed here and here) by a number of countries, but the conclusion of those disputes has been coming for some years now. While similar initiatives have been introduced in a number of countries, including the UK, the disputes seem to have put a damper on those efforts, if nothing at least for the duration of the cases.

The WTO dispute (including others made by other nations) concerns the TPP Act 2011, which introduced measures to standardize tobacco product packaging, including changing the color to a boring olive green, and prominently displaying graphic warning labels. The arguments presented against the legislation were that it presents a technical barrier to trade under the Agreement on Technical Barriers to Trade (Articles 2.1 and 2.2), and infringing various provisions under the TRIPS Agreement, for example giving other Member countries more or less favorable treatment (Article 3.1) or creating an obstacle for the registration of a trademark due to the nature of the goods it is used for (Article 15.4). Finally, the Act allegedly gives imported products less favorable treatment under The General Agreement on Tariffs and Trade (Article 3.4).

As discussed above, while the judgment hasn't been released yet, sources at the WTO have claimed that the WTO has sided with the Australian government's argument on the measure qualifying as a legitimate public health measure. The restriction of branding, therefore, does not infringe the above Agreements, and is appropriate for the aim sought by the legislation.

The details of the case will be discussed more when the decision is released in July, but it still remains an important signpost in the development of plain packaging legislation worldwide.

Without a doubt, the tobacco companies and the relevant countries will appeal the decision, as has been indicated by British American Tobacco.

'Quitting clearly had no benefits', Alan thought

According to the WTO, a barrier to trade would amount to, for example, any methods that would give domestically produced goods an unfair advantage. Additionally, countries have the prerogative to "...adopt the standards they consider appropriate — for example, for human, animal or plant life or health, for the protection of the environment or to meet other consumer interests". Even if the standards are brought in to protect these legitimate aims, they still cannot be "...applied in a manner which would constitute a means of arbitrary or unjustifiable discrimination between countries where the same conditions prevail or a disguised restriction on international trade".

This writer does not claim to be a master of international trade law, but would argue that the application of a plain packaging standard to protect human life and health would not amount to a barrier on trade, as the standard would apply equally to Australian and foreign tobacco producers, and is clearly not an arbitrary or unjustifiable measure to do so. Plain packaging evens the playing field for all tobacco producers, but also seeks to stop the starting of a smoking habit, lowering the amounts of tobacco products used in that particular country (Australia showing a drop of 6% in smoking rates in adults, and the reduction of sales of tobacco products by nearly $500 million after the law's introduction).

In the end, plain packaging will be a hard fought, long battle, which will clearly go on for years to come. The tobacco industry is also in a state of transition from the old business models to new ones, including vape products, but the core remains the same and the brands equally valuable to that business. This writer is wholly for plain packaging, but its impact on IP will be a milestone for not just tobacco, but for other possibly harmful products in the future.

Source: Sydney Morning Herald

Star Jumps and Trademarks

Marketing is an incredibly powerful tool for a brand, and its protection can often be the difference between a successful promotion of your goods, distinguishing them in a favorable way from others. Trademarks offer such protection, with a variety of things being included as possible trademarks in Australia. The issue in a recent dispute over a trademark being sought by Jetstar (a subsidiary of Qantas Airways) was something potentially worth jumping to arms for.

Elephants don't see why you'd ever need to jump

In a recent promotional campaign Jetstar used people doing a star jump as an expression of the joys that travel can give you when using their services when flying to a destination, having started the campaign in 2004. Toyota have been running a campaign featuring a similar jump since the 1980s, and applied for trademarks for over 30 different variations of the star jump in 2012. A few of these applications were contested by Jetstar, who in turn filed several applications for a number of variations of the jump in the last few months. Clearly there was an issue over who has the trademark for the particular jump.

In a recent development Jetstar's representative indicated that they were only concerned with the straight-legged star jump, and would not be concerned with Toyota's bent-knee versions of the jump. With both parties having successfully registered a number of variations, they have equal claim to the trademark should things be litigated. Toyota's history of using it in advertising should work in their favor, however successfully retaining motion marks is a difficult matter. Whether the parties choose to litigate on the matter or opt to settle will remain to be seen, but the situation goes to show just how varied trademarks can be and how important something simple as a jump can be when it comes to a company's image.

Source: Sydney Morning Herald

App Store Struggles End

Yet another chapter in the Apple litigation era came to an end roughly a week ago. The fight over the trademarked phrase "App Store" has raged between Apple and Amazon since early 2011,  having had its ups and downs during the two years. The matter ended once Apple approached Amazon with an agreement to end all current and possible future disputes over the term, effectively allowing both parties to use the phrase as they please. The case, set to have a hearing in August of this year, was subsequently dismissed by Judge Hamilton in the Oakland District Court.

A cavalcade of time-wasting apptastic action

For a bit further exposition in where the situation stood prior to this settlement, Apple own the trademark for the name "App Store", having applied for it in 2008. The name was contended as being too generic, covered under 15 USC § 1064, where the registration of a trademark can be cancelled should it stop from distinguishing the goods of the original registrar from others which are similar. Arguably with other companies such as Amazon and Microsoft using similar names in similar services offering applications for their respective operating systems, the term has indeed become generic and purely descriptive of a digital store-front for applications. As in their statement to Reuters, Apple will now have to distinguish its services from the rest of the pack purely on merit, not by the protection of a specific name to those services.

Only a few months ago in Australia the same trademark was rejected by the Australian Trade Marks Office due to it being merely descriptive and didn't distinguish Apple's services from their competitors. The application was rejected under the Trade Marks Act 1995. Instead of the name being considered generic, as was contended in the US, the mark was seen to only descriptive a store where applications were sold, and only functioned in conjunction with other well-known marks such as "iPod" or "iPhone"; the name itself didn't sufficiently stand on its own to distinguish Apple's store from others.

What this does is close the contention over the mark so dearly held on by Apple. From a legal stand-point Apple's decision to end the legal process was a sensible one, with a very high probability their mark would have been invalidated by the courts. Prolonging the process would have cost both parties more and yielded little or no reward in the long run. After all, a simple name change would probably have not pushed customers away from Amazon's services to use Apple's instead.

Source: Reuters

Chinese Intellectual Property Law (Part 1) - Copyright

With China having become a huge economic power in the last few decades, I thought it'd be about time to write a short overview of the different aspects of intellectual property law in China. These posts will be split into three parts, each discussing a different area. We'll kick things off with copyright law. Often the more disputed topic in the area, when close to a third of all counterfeit imports to Europe were from China in 2009.

The Chinese copyright legislation has been an issue for most of the 1990s and early 2000s, as other nations saw their laws as inadequate and their enforcement of the provisions lax at best. The first iteration of their copyright law was enacted in 1990; the Copyright Law of the People's Republic of China (English translation can be found here, Chinese here). 

The aim of the legislation is simple: 

"This Law is enacted, in accordance with the Constitution, for the purpose of protecting the copyright of authors in their literary, artistic and scientific works and the rights and interests related to copyright, encouraging the creation and dissemination of works conducive to the building of a socialist society that is advanced ethically and materially, and promoting the progress and flourishing of socialist culture and sciences". 

One key difference has to be noted; the Chinese law actively encourages the dissemination of works. Often omitted in especially common law nations, the notion of dissemination of works is more often than not left on the back burner, as a hand-down in the form of "fair dealing" or "fair use". While still being a part of the given legislation, it seems it's not as intrinsically embedded in the laws as it seems to be in the Chinese equivalent, at least on the face of it.

The law provides protection for the typical assortment of subject matters that most legislatures seem to have offered, such as written, oral, photographic and graphic works. The protection is also offered to foreign nationals who are subject to treaties to which China and their nation are signatories to, such as the Berne Convention and TRIPS. The legislation is heavily modeled after the Berne Convention and thus all aspects of the law need not be expanded upon further, as they mirror most national legislations in common law countries, and possibly civil law countries as well.

Copying taken to an extreme

Terms for copyright are, again, very similar to ones found in, for example Australia and the UK, where protection is offered for life and 50 years after death, aside from cinematographic works which are given 50 years of protection from its first publication. The latter differs from Australia for example, where the duration is 25 years after initial publication.

Some issues are presented in the Chinese "fair dealing" provisions or situations where works may be used without permission or payment to the creator of the work. Several of the categories, such as the permission to rebroadcasting or publishing of speeches or content published by other newspapers or news outlets, are opt-out provisions. By default there is an assumed ability to reuse your content, even by competitors. Secondly, there is a provision allowing the live performances of works for free. This provision allows for a very wide and open-ended ability to utilize content at any events which don't charge an entrance fee, such as conventions or festivals. Not really the biggest of issues, but does leave a gaping hole when it comes to the protection of a performer's right to their content. Most of the "fair dealing" provisions in the legislation are standard ones found in most common law countries, either in express categories or through the common law.

Overall the legislation follows Berne very closely, and should sound familiar to those who've dealt with it before. Not being entirely familiar with the starting point of the Chinese legislation it is hard to say just how far they have come in the last few decades, but surely the standard of protection has gotten better as the country has become more and more "capitalist".

There has been contention over the legislation since its inception. China has been dispute settlement through the instigation of other countries at the WTO 30 times since 2002, after it became a member of the organisation in 2001. There have been noted issues in especially the enforcement of the protection of intellectual property rights, where China has been lacking for years.

Even with its shaky emergence into the wider intellectual property regime, China has made strides towards a more universally accepted standard of protection given to intellectual property rights. The National Copyright Administration of China released its Draft Proposal only a few months ago, which would bring about much needed amendments to the current legislation. The aim of the amendments is to extend the scope of copyright, to encourage its registration, include resale royalties and to amend restrictions applying to certain types of copyright. When and how the law is finally amended remains to be seen, but it should bring China closer to a more international standard.

(Part 2 discussing Trademarks can be found here, Part 3 discussing Patents here)