The leaked negotiating text of the IP chapter of the TPP reveals two issues of interest to those concerned about the impact of the TPP on tobacco packaging and labeling measures. First, the text appears to offer an interpretation of Article 20 of TRIPS, which is a key provision in challenges to plain packaging of tobacco products at the WTO. Second, the US continues to push for language that would create an affirmative right to use signs or indications that reference a particular geographical area that is not the place of origin.
Regular readers will be familiar with the requirements of Article 20 of TRIPS, which prohibits Members from unjustifiably encumbering the use of a trademark in the course of trade with special requirements. This provision has been invoked in complaints against Australia’s plain tobacco packaging regulation. In that context, the key legal question appears to be whether that regulation is justifiable.
In Article QQ.C.2 of the TPP negotiating text the US is pushing a provision that makes a cross-reference to Article 20. The proposal is as follows:
[US/PE/MX/SG propose; AU/NZ/ VN/BN/MY/CL/CA oppose: 2. Pursuant to Article 20 of the TRIPS Agreement, each Party shall ensure that its measures mandating the use of the term customary in common language as the common name for a good or service (“common name”) including, inter alia, requirements concerning the relative size, placement or style of use of the trademark in relation to the common name, do not impair the use or effectiveness of trademarks used in relation to such good or service.]43
The footnotes to the provision read as follows:
41 Negotiators’ Notes: PE/MX/SG will go with consensus on this paragraph.
42 [PE/US propose: For greater certainty, the existence of such measures does not per se, amount to impairment.]
43 Negotiators’ Note: MX is still reflecting on this provision. JP is considering this provision.
44 [SG propose: this provision is not intended to affect the use of common names of pharmaceutical products in prescribing medicine.]
Two things stand out about this proposal. First, the phrase ‘pursuant to’ suggests that the TPP Parties are offering their interpretation of the commitments set out in TRIPS Article 20. Second, the passage omits the word ‘unjustifiably’, which suggests that there is no justification for impairing the use or effectiveness of trademarks where measures mandate use of a common name. Although this provision would not ordinarily apply to tobacco packaging and labeling measures, the provision could narrow interpretation of the term ‘unjustifiably’, which seems better suited to being interpreted on a case-by-case basis. Solutions include removing the cross-reference to TRIPS Article 20 and/or including the term unjustifiably in Article QQ.C.2.
The Australian plain packaging law prohibits use of branding on tobacco packaging with the exception of the brand and variant name in a standardized font and size. In a law journal article on the TPP, Bob Stumberg has pointed out how plain packaging may conflict with earlier US proposals to provide a right to use place names and signs on goods. A subsequent version of this proposal found in the leaked text reads as follows:
Article QQ.D.14: [US propose; CL/PE/VN/MY/CA oppose: Each Party shall permit the use, and as appropriate, allow the registration, of signs or indications that identify goods other than wines or spirits, and that reference a geographical area that is not the place of origin of the goods, unless such use is misleading, would constitute an act of unfair competition, or would cause a likelihood of confusion with a prior trademark or geographical indication that identifies the same or similar goods. The foregoing shall not be understood to prevent a Party from denying registration of such a sign or indication on other grounds, provided such denial does not derogate from the provisions of the Paris Convention and the TRIPS Agreement.]
The purpose of this proposal is to permit US producers to continue to use place names, signs and indications, even if the product in question is not produced in that place. Such a right of use would, however, appear to conflict with plain packaging. Geographic areas such as Marlboro and Salem have lent their names to tobacco products and it is easy to imagine tobacco manufacturers arguing that they would be entitled under such a provision to include signs and other indications on product packaging.