Impact of plain packaging on the tobacco industry from a trade mark perspective

14 September 2015

Following the introduction of The Standardised Packaging of Tobacco Products Regulations in March 2015, plain tobacco packaging will soon become a reality in the UK. All products manufactured after 20 May 2016 for sale in the UK must comply with the legislation, and any products not complying with the Regulations will have to be sold before 21 May 2017. So what exactly does this mean for the intellectual property rights of tobacco manufacturers?

Once plain packaging is introduced, it is clear that the ability of tobacco manufacturers to use trade marks and pack design to distinguish their products from those of other companies will be severely diminished. The law will require that all forms of tobacco packaging is labelled exclusively with simple unadorned text, meaning that all graphics and logos applied by manufacturers will need to be removed. The brand name can be displayed in plain text in a specified size and colour of Helvetica font, and the colour of every pack must be a specific shade of ‘drab dark brown’, removing the ability of manufacturers to use colour to distinguish their products. The use of branding and colour inside the pack and on cigarettes themselves will also be heavily restricted.

These restrictions on tobacco companies’ ability to use their valuable brands have already been challenged through the UK Courts. British American Tobacco and Philip Morris claim that preventing them from using their trade marks without fair compensation contravenes European and English law. Imperial Tobacco and Japan Tobacco International (JTI) have said they intend to bring similar challenges. However, all legal challenges brought by the tobacco industry in Australia, where plain packaging laws have been in force since 2012, have so far been unsuccessful.

From a trade mark registration perspective, the Regulations provide some scant consolation for brand owners - they specifically state that they do not form an obstacle to the registration of a trade mark. Further, they clarify that the introduction of the plain packaging legislation means that there is a ‘proper reason for non-use’ of any registered trade marks that would otherwise have been in use. This means it will not be possible to cancel these trade marks due to non-use, so tobacco companies will be able to retain and enforce any trade mark registrations they are unable to use due to the Regulations. 

Aside from the additional difficulties the legislation will create in advertising tobacco products in an already heavily restricted market, there are concerns that the legislation will lead to an increase in trade in counterfeit goods, as illicit products may be cheaper and easier to produce given the standardisation of packaging across the market. For similar reasons, counterfeit products may also be more difficult for customs officials and trading standards officers to identify, meaning fewer illicit products may be caught before entering the marketplace. All of this is likely to mean tobacco manufacturers will need to step up their involvement in directly policing the market for illicit products, whilst also finding new, and ever more subtle, ways to distinguish their genuine products.

Michael Conway

Michael Conway

Associate Partner

Our Expert
Michael Conway
Michael Conway
Location: Bristol (UK)

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