Click for Quotes from the Court Rulings on the Key Legal Issues and Summaries of the Legal Challenges for more details on all cases.

1. Introduction

The tobacco industry legal challenges to plain packaging have all so far been defeated. Despite this, the tobacco companies continue to assert aggressively that plain packaging is unlawful in every country that considers the policy.

This Toolkit is intended to provide governments and civil society organizations with the resources to ensure that tobacco product plain packaging legislation is robust and can stand against any legal challenge from the tobacco industry. Following the recommended steps outlined in this Toolkit should lead to a strong, defendable law. Nevertheless, government officials need to be aware of the legal arguments that the industry use to challenge the laws and be prepared for the risks of a legal challenge.

National courts: Legal challenges have been commenced, and dismissed, in the domestic courts of most of the countries that have adopted plain packaging laws including Australia, the UK, Ireland and France.
Regional courts: A legal challenge to the European Union’s Tobacco Products Directive (TPD), dismissed in May 2016, included a claim against the provision in the TPD that permitted Member States to adopt plain packaging if they choose to.
International courts: An international investment arbitration claim brought by Philip Morris against Australia was dismissed by the Tribunal in December 2015. A World Trade Organization complaint brought by four countries against Australia's plain packaging laws was dismissed by the WTO panel in June 2018, and appeals were dismissed by the Appellate Body in June 2020.

Despite these very clear court rulings upholding plain packaging legislation around the world, the tobacco companies continue to argue that the legislation is unlawful:

British American Tobacco’s website states that plain packaging is “Legislation that we believe is ineffective and unlawful.”¹
Japan Tobacco International’s website states that “plain packaging would infringe JTI's fundamental legal rights to property, expression and trade – without justification. These rights are protected by Constitutions, international trade treaties, intellectual property laws, bilateral investment treaties, and national laws.”²
Philip Morris International, in response to the tribunal’s ruling dismissing the investment arbitration claim, stated, “There is nothing in today’s outcome that addresses, let alone validates, plain packaging in Australia or anywhere else.”³

For policy or health officials, these issues can appear to be complex and daunting at first glance. These pages try to set out the legal issues in a way that is accessible to non-lawyers. Assistance is also available from the CTFK International Legal Consortium to help government officials understand these issues or respond to tobacco industry threats and allegations.

Every legal jurisdiction is different. The analysis of the legal issues contained on this page should not substitute for proper consideration of the legal issues undertaken by in country lawyers. See Guide 4.2.

1.1 The “Right to Use” a Trademark

The tobacco industry claims that plain packaging interferes with its trademark rights in a way that conflicts with national and international intellectual property laws and obligations. Most of its arguments rely— in some way— on the contention that registered trademarks afford the owner a positive right to use that trademark and that plain packaging prevents them from using their trademarks. They argue that this principle is found in international law - under the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) - as well as being recognized under national trademark laws.

Internal documents from the tobacco companies also show that they received advice from their own lawyers, and from the director of the World Intellectual Property Organization, dating as far back as 1994, that plain packaging would not breach international intellectual property law.⁴

Courts and tribunals have also rejected this argument. Instead, the courts have confirmed a traditional view that trademark rights allow the owner to prevent other people from using the trademark. This “right to exclude” does not include an absolute right to use the trademark in any and all situations but is limited, particularly where a government is regulating and limiting the use in the public interest.⁵

In the UK, in the judgment of the High Court on the UK plain packaging regulations, the judge ruled:
It is no part of international, EU or domestic common law on intellectual property that the legitimate function of a trade mark (i.e. its essence or substance) should be defined to include a right to use the mark to harm public health.⁶ [¶40].
In the PMI v Uruguay investment arbitration claim the tribunal stated:
It is a right of use that exists vis-à-vis other persons, an exclusive right, but a relative one. It is not an absolute right to use that can be asserted against the State⁷[¶267]
The Tribunal concludes that under Uruguayan law or international conventions … the trademark holder does not enjoy an absolute right of use, free of regulation.[¶271]
The WTO dispute panel, in the Australia – Plain Packaging dispute, dismissed all arguments that trademark owners had a right to use their marks. The panel confirmed that TRIPS Article 16.1 only provides a right for trademark owners to prevent others from using their marks but gives no positive right to use a trademark [¶7.2015 and 7.1031].
A separate earlier WTO dispute panel (in relation to a case not concerning tobacco trademarks) also confirmed this view:
These principles reflect the fact that the [WTO TRIPs Agreement] does not generally provide for the grant of positive rights to exploit or use certain subject matter, but rather provides for the grant of negative rights to prevent certain acts. This fundamental feature of intellectual property protection inherently grants Members freedom to pursue public policy objectives … .⁸

Legal academics have also affirmed the position of plain packaging under international and intellectual property law in a number of published papers.⁹

The “Exclusive Right to Use” in National Trademark Acts.

In most countries, national trademark laws clearly set out the nature of the right conferred on a trademark owner as being a right to exclude or prevent others from using the trademark for the product or service for which it is registered.¹⁰ However, in some countries, the trademark legislation is drafted to afford the owner an “exclusive right to use” the trademark.

One example is the Australian Trade Marks Act 1995 ¹¹:

Section 20: Rights given by registration of trade mark
(1) If a trademark is registered, the registered owner of the trademark has, subject to this Part, the exclusive rights:
(a) to use the trademark; and
(b) to authorise other persons to use the trademark;
in relation to the goods and/or services in respect of which the trademark is registered.

The tobacco companies’ constitutional legal claim against plain packaging in Australia led to a decision on the nature of the trademark right under the Australian Constitution. The Australian High Court ruled that the right conferred by trademarks was exclusive in nature and could only be asserted to stop others from using the mark. The right could not be used to prevent government regulations that restricted the companies’ use of their trademarks. The Court said:

Strictly speaking, the right subsisting in the owner of a trademark is a negative and not a positive right. It is to be understood as a right to exclude others from using the mark and cannot be viewed as separate from the trade in connection with which it is used. [para 348]

While the decisions on the nature of trademarks have held in favor of an “exclusive right,” intellectual property law issues are complex. Plain packaging policies do place strict restrictions and controls on the use of trademarks on product packaging. Given these restrictions it is important that separate legal consideration is given to the way in which plain packaging laws would interact with domestic or national intellectual property laws.

Trademark-Saving Provision

It is always important to include a trademark-saving provision in any plain packaging laws (see Guide 3.2 Draft the Law and the Each Clause Explained page) and it is possible that an explicit exemption from aspects of a country's trade mark act will need to be included.

1.2 Compatibility with national trademarks laws / design acts

As indicated above in section 1.1, the main concern as to compatibility with national intellectual property laws is the argument that registration provides an explicit or implicit "right to use" the trademark or design, which is breached by the restrictions in plain packaging laws. The tobacco companies have also raised some other issues on compatibility with trademark laws.

While there may be some complexity to these other legal arguments, they are basically a different way of arguing for a “right to use” the tobacco trademarks. As shown in 1.1 above, these arguments have all been rejected by the Courts. Examples of the arguments are:

Plain Packaging Deprives the Trademarks of Their Essential Functions

The tobacco companies state that trademarks have a number of essential functions including:

to distinguish the product in question as originating from a particular undertaking or producer
to prevent confusion for the consumer
to guarantee the identity of the origin of the product to the consumer
to guarantee quality

The companies argue that where tobacco advertising bans exist, packaging is the only remaining place that word and figurative trademarks for tobacco products is still permitted and so can perform these essential functions. The tobacco companies argue that courts have upheld the fundamental importance of these essential functions of trademarks.

Trademarks with a High Reputation

Some national trademark acts provide increased protections for trademarks that have acquired a higher reputation. The tobacco companies argue that because plain packaging means they cannot use their trademarks, the reputation of those marks will be reduced, and thus they will lose protections that were previously guaranteed under national law.

Revocation of a Trademark for Non-Use

Many national trademark acts have a provision that allows an application for revocation of a trademark’s registration where it has not been used for five years or more and there is no good reason for its non-use. The tobacco companies argue that plain packaging will inevitably mean they do not use their trademarks, which could lead to applications for revocation. This could lead to them being deprived of their marks. This argument can be addressed effectively with a trademark-saving provision as outlined in Guide 3.2 Draft the Law.

1.3 Unlawful acquisition or deprivation of the property rights in trademarks

The tobacco companies claim that restricting or controlling the use of trademarks on the packaging of tobacco products through plain packaging laws, has the effect of “taking” or “appropriating” their property rights in those trademarks.

It is generally accepted that trademarks are a form of property, and so there is the potential for the trademarks rights to be taken or acquired by others. The issue is then whether plain packaging laws result in a regulatory or indirect “taking” for which tobacco companies should receive compensation.

Property rights, or the freedom to peaceful enjoyment of property, are protected in many countries’ constitutions, as well as in regional Human Rights treaties. In addition, foreign investors are given protections under international investment treaties to prevent the unlawful “expropriation” of their investments by states. Different jurisdictions use different terminology for this taking, such as “expropriation”, “acquisition,” or “deprivation” and varying legal tests are applied.

The claims that plain packaging amounts to expropriation of property rights have been rejected by courts across all jurisdictions:

In Australia, the High Court firmly rejected these arguments, stating that, although the Tobacco Plain Packaging Act regulated intellectual property rights and imposed controls on the packaging of tobacco products, it did not confer a proprietary benefit on the Commonwealth or any other person. As a result, no one acquired any property by registering a trademark.
In the UK, the High Court determined that plain packaging is merely a legitimate control on the use of the trademarks. Consequently, no acquisition or deprivation results from plain packaging laws. The judgment on the UK regulations went on to say that, even if there had been a deprivation, it would be justified without compensation owing to the urgent need to protect against the harms of tobacco. This was confirmed by the Court of Appeal ruling.
In France, the Conseil d'État found that the right not to be deprived of property poses no obstacle to the regulation of goods in the public interest provided the measure is proportionate. The Court held that while the effects of plain packaging are hard to quantify, the regulations must be regarded as unable to do anything other than, reduce tobacco consumption over time and, consequently, are a proportionate measure.
In PMI v Uruguay, an international investment tribunal dismissed a claim by Philip Morris against Uruguay’s 80% health warnings and Single Presentation Requirement that prevented multiple brand variations. Part of the claim was that the measures had the effect of “expropriating” Philip Morris’s trademarks and brands, in breach of the Bilateral Investment Treaty — this claim was unanimously rejected by the panel.

See the Summaries of Legal Challenges page for more details on these cases.

1.4 Freedom of expression and freedom to conduct a business or trade

Many national constitutions, as well as regional human rights treaties, provide for the right to freedom of expression and the right to conduct a business or trade. The tobacco industry has claimed that plain packaging laws violate these rights.

In any system of rights, there is a balance to be struck between competing rights and freedoms. The freedoms relied upon by the tobacco industry are never expressed in absolute terms and are always subject to laws enacted for the public interest. In many legal systems, the freedom of commercial expression is given a lower priority than other forms of expression, such as political or journalistic freedom of expression. In the case of plain packaging laws, freedom of expression must be balanced against the right to life or health, or simply the inherent right of the state to regulate for the public good.

In the UK, the High Court (confirmed by the Court of Appeal) found that any interference by plain packaging laws with the right to freedom of commercial expression (under the European Convention on Human Rights or the EU Fundamental Charter) would be justified by the overriding public health interests.¹²
In France, the Conseil Constitutionel took a similar approach in respect of Article 2 of the 1789 Declaration (right to free enterprise), holding that, by enacting plain packaging laws, the Parliament intended to deprive tobacco products of a form of advertising likely to encourage consumption. The laws did not prohibit production distribution or sale of tobacco and there was therefore no disproportionate interference with the rights to property or free enterprise.¹³
In the European Union, in the tobacco companies’ challenge to the Tobacco Products Directive, the opinion of the Advocate General to the Court was that the right to conduct a business may be subject to a broad range of interventions on the part of public authorities, which may limit the exercise of economic activity in the public interest. Moreover, the Union legislature has a broad discretion in an area that involves political, economic, and social choices and in which it is called upon to undertake complex assessments and evaluations.¹⁴

See the Summaries of Legal Challenges page for more details on these cases.

However, in some jurisdictions these freedoms are given greater priority. For instance, in the USA, the priority given to the right to commercial freedom of expression would make it more difficult for plain packaging to get past constitutional objections. In Sweden, a public inquiry into a review of the Tobacco Control Act stated that plain packaging of tobacco would be compliant with the European Convention Human Rights and all European Union law but would not be compatible with the current provisions of the Freedom of the Press Act; and should only be introduced if an exception making such a requirement is introduced in the Constitution.¹⁵

An assessment of these issues needs to be undertaken for each country. However, all the courts that have considered the legislation thus far have found that plain packaging regulation is no different to regulations for warnings or labeling imposed on other products, especially potentially dangerous consumer products. For plain packaging, the balance has always been found to be in favor of the government’s right to regulate to protect public health rather than commercial interests.

1.5 Not justified or supported by the evidence

The issue of whether there is sufficient evidence or not that the policy will contribute to or achieve its objectives goes to the heart of many legal tests. These legal tests vary between jurisdictions but, as is stated throughout this Toolkit, the tobacco companies have consistently claimed that there is no evidence to demonstrate plain packaging will work to reduce smoking rates. The companies have commissioned numerous reports that criticize the supporting evidence, either as individual studies or as a whole. Full details are provided on the Tobacco Industry Arguments (and How to Counter Them) page.

However, this Toolkit also clearly establishes the volumes of evidence that show plain packaging will be an effective component of a comprehensive tobacco-control strategy. See Research Evidence and Post Implementation Evidence from Australia pages.

The WTO panel in the Australia - Plain Packaging case ruled that the totality of the evidence supported the following conclusions:
- “Plain packaging … measures are apt to, and do in fact, contribute to Australia’s objectives” [para. 7.1025]
- “Branded packaging can act as an advertising or promotion tool” [para 7.659]
- Branded packaging can work to attract new smokers [para. 7.1032]
- Plain packaging measures “increase the effectiveness of graphic health warnings” [para. 7.825]

The High Court challenge against the UK Regulations was the first legal challenge that addressed the evidence on both sides in detail. The 400-page judgment of Mr Justice Green goes to considerable length to assess this evidence.

The judge’s conclusion was that the “qualitative evidence relied upon by the [Government] is cogent, substantial and overwhelmingly one-directional in its conclusion.” [para 492]

He was then scathing in his criticism of the evidence put forward by the tobacco companies because it was not peer reviewed, either ignored or airily dismissed the worldwide research and literature base, and was frequently unverifiable. He made detailed critiques of each of the expert reports put forward by the tobacco companies and concluded that this “body of expert evidence does not accord with internationally recognised best practice.” [para 374]

See the Summaries of Legal Challenges page for more details on the WTO and UK legal challenges.

1.6 An unreasonable, disproportionate, or unnecessary measure

These arguments concern the justification for the measure considering the benefit of the public interest relative to the burden it places on the applicant. Similar principles are applied across many legal jurisdictions, both national and international, and consider whether or not the measure has a legitimate objective and if the measure is both suitable and necessary to achieve its objectives.

There is often a balancing of the importance of the objective, the extent to which the measure is capable of achieving the objective, and the degree of interference with an applicant’s interests. Guide 1.1 Set Policy Objectives, describes the importance of setting clear and measurable objectives for plain packaging. Without clear objectives, courts are faced with a more difficult task in determining this balance.

Courts are generally willing to accept that tobacco control measures have a legitimate public health objective. The tobacco industry seeks to argue that there is no evidence to support the contention that plain packaging will be effective to reduce smoking rates (and so it is unsuitable to meet its objectives) and that there are alternative more effective measures at reducing smoking rates (and so plain packaging is unnecessary).

A court or tribunal must therefore undertake an analysis of the evidence in support of the measure to see if it is justified. The intensity of that analysis, the margin of appreciation, or how much deference is given to the government in taking decisions about public health will vary between jurisdictions.

For instance, in their challenge to the UK Regulations, the tobacco companies claimed that the government:

"failed to discharge the burden [it] bears of proving that the Regulations are proportionate. In particular:

(a) The objective of the Regulations is ‘improving public health by reducing smoking’. The Defendant has failed to demonstrate that the Regulations are suitable or appropriate to meet this objective because it has failed to establish that the Regulations will cause a material decrease in smoking rather than an increase16 ... [and] because the evidence does not show that there are no equally effective but less restrictive alternatives.17"

This argument was rejected by the UK Courts and elsewhere.

In both the UK and France, the courts found that plain packaging was a reasonable, proportionate and necessary measure having regard to its objectives and the great harms caused by tobacco.
The French Conseil d'État found that plain packaging regulations must be regarded as unable to do anything other than reduce the consumption of tobacco products over time and, consequently, are a proportionate means to ensure the accomplishment of the objective of protecting public health.
In the UK High Court, the tobacco companies argued that the UK could have introduced less restrictive measures such as an increase in tobacco taxes, increasing the minimum age for buying tobacco and educational campaigns. The judge stated that, in respect of all these submissions, no supporting evidence was adduced and that “The Claimants’ argument amounts to mere assertion.” [para 668]
In the UK Court of Appeal, the court confirmed that “none of the claimed alternatives, including increased taxation, would achieve all of the objectives pursued by the Regulations and that they should be regarded instead as complementary measures forming part of a comprehensive tobacco control strategy, an approach supported by the FCTC.” [para 243]

This finding by the UK Court of Appeal reinforces the importance of setting out all the objectives of the legislation (including reducing the appeal of packaging, enhancing the health warnings, and reducing the misleading effect of packaging) in official documents and not to just rely on plain packaging being a policy to reduce smoking. It is also important to consider the various alternatives put forward in the course of consultation or stakeholder input (see Guide 2.1 Evidence Review and Guide 2.3 Stakeholder Input / Public Consultation).

See the Summaries of Legal Challenges page for more details on cases mentioned above.

1.7 Introduced without proper due process

This issue concerns the way in which a government conducted the policy development and legislative process. The tobacco industry will often argue that tobacco control measures were adopted:

without the government giving proper consideration to all the evidence and issues;
without proper consultation with, or input from, affected stakeholders, such as the companies;
without using fair and transparent procedures; or
using procedures that are not in accordance with a country’s constitutional and administrative rules.

The steps set out in this Toolkit, adapted for compliance with national administrative processes, should provide a sound procedural basis for adopting plain packaging.

In the legal claims in the UK and France, the tobacco companies made different technical due process claims. These were rejected by the courts in both cases, but these are fact specific issues that concern the procedures used by each government.

The dissenting opinion of one of the arbitrators in the PMI v. Uruguay case held that there was no documentary record that the Ministry of Health had given any proper consideration to the single presentation requirement before it was adopted, and that arbitrator found Uruguay in breach of its duty to provide “fair and equitable treatment.” While the majority of the tribunal did not agree, this acts as a cautionary reminder that to protect against tobacco industry legal challenges, officials should ensure both proper consideration of the evidence and issues, and make careful records of the policy development and decision making process (see Guide 1.2 Establish a Document Record).

1.8 Violates the World Trade Organization agreements

World Trade Organization (WTO) law limits the way in which WTO Members may restrict or regulate international trade in goods and services, and also imposes obligations on the protection of intellectual property rights. The law is enforced through a system of dispute settlement between its Members. This means only the governments of other WTO Member States may bring a complaint that can then be referred to a dispute panel. A panel ruling may be appealed to the Appellate Body.

The tobacco companies regularly allege in letters and submissions to governments that effective tobacco packaging and labeling laws, including large health warnings and plain packaging, breach the WTO agreements. Ministry of Health officials need to be robust in responding to or dealing with these allegations.

After decades of the tobacco industry making these threats and allegations, in 2012 and 2013, Honduras, Indonesia, the Dominican Republic, and Cuba filed complaints with the World Trade Organization (WTO) claiming that Australia’s plain packaging laws breach various articles of the WTO agreements. More details about this case are given in the Summaries of Legal Challenges page. The main claims made by the complainant countries are that plain packaging:

breaches the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) by failing to provide protection of trademark rights as required under that agreement, including by unjustifiably encumbering the use of trademarks in the course of trade.
breaches the WTO’s Agreement on Technical Barriers to Trade because it constitutes a “technical regulation” that is “more trade-restrictive than necessary to fulfill a legitimate objective.”
breaches the WTO’s General Agreement on Tariffs and Trade (GATT 1994), the Agreement on Technical Barriers to Trade, and the TRIPS Agreement because the measure discriminates between like imported and domestic products, as well as discriminating between like imported products.

The Australian Government has published an executive summary of its legal arguments refuting these claims. Read the executive summary.

On June 28, 2018, the WTO panel dismissed all the grounds of complaint, and on June 6, 2020, the WTO Appellate Body upheld the panel’s ruling in full.

The panel’s authoritative ruling should be powerful in persuading governments to move forward with tobacco plain packaging and can be used to resist the flawed arguments that the tobacco industry puts forward to oppose the policy. Governments can now move forward with confidence that tobacco plain packaging is a proven policy that does not in any way violate WTO rules and obligations.

The World Health Organization (WHO) publication on plain packaging of tobacco products, in section 3.2.1, contains a useful summary of the main elements of WTO law relevant to tobacco plain packaging. The document highlights that there are well-established principles (regularly ignored by the tobacco industry) that demonstrate the flexibility WTO Members have to regulate in the public interest and that protection of human health is accorded the highest importance in WTO dispute settlement. Read the full publication.

It is also useful to note that a number of national courts and international tribunals have also considered whether plain packaging or other tobacco packaging measures breach the WTO rulings.

In both the UK and France, the tobacco companies’ legal challenges before the national courts included claims that the governments were in breach of their international obligations because plain packaging laws violated the WTO agreements, in particular the TRIPS agreement. The courts in both countries rejected these claims.
In the PMI v Uruguay arbitration claim, the tribunal held that Uruguay’s packaging requirements did not violate Uruguay’s international obligations in particular under the WTO agreements.

1.9 Breaches international investment treaties

International Investment Treaties (IITs) are agreements between two or more countries. These agreements give investors located in one party to the IIT protections and legal security for their direct investments into the other party or parties to the IIT. The purpose of IITs is to encourage more direct foreign investment. Almost all nations across the globe have signed up to these agreements and the protections they afford to foreign investors.

Most IITs include what is known as Investor-State Dispute Settlement (ISDS) provisions. These provisions provide a system for foreign investors to commence an arbitration claim if the investor believes the government of the host nation has breached their obligations under the IIT. The measures that are challenged can sometimes be genuine, public-interest policies or decisions to protect the environment or public health but which in some way affect the use of the investment or its value.

These claims can be for millions, sometimes billions of dollars in compensation, and the arbitration lawsuits typically take many years to resolve and involve huge legal bills. However, one of the primary aims of the tobacco industry in bringing these claims is to create “regulatory chilling effect” and deter other governments from enacting effective tobacco-control regulation.

Philip Morris brought two international investment arbitration claims against tobacco-control under Bilateral Investment Treaties — the first against Uruguay’s 80% health warnings and its Single Presentation Requirement; the second against Australia’s plain packaging laws. Both claims were dismissed. The tribunal in the claim against Australia’s plain packaging declined jurisdiction on the basis that the claim was an “abuse of rights,” so the merits were not determined. A short summary of these cases is in the Summaries of Legal Challenges page.

Although the case against Uruguay did not concern plain packaging legislation, the ruling has significant relevance to the legality of the policy as it concerns many of the broad themes set out above. In particular, the tribunal found that the tobacco-control measures were not an expropriation of property, that there was no “right to use” a trademark, and that the measures were compatible with the WTO agreements.

More information about international investment law and tobacco control is available from the WHO FCTC Knowledge Hub on legal challenges.

2. QUOTES FROM COURT RULINGS ON THE KEY LEGAL ISSUES

The legal claims against plain packaging have broad similarities across jurisdictions. The table below sets out the typical legal claims made by the tobacco companies in their challenges and what the courts and tribunals have ruled on those claims. The rulings and judgments used are from the cases detailed in part 4 of this Tools and Resources section. Relevant paragraph numbers from the rulings are given in square brackets [¶].

What the Tobacco Companies Claim	What the Courts Have Said When Dismissing the Claims
The policy is not “justified,”“necessary,” or “proportionate”	UK: “The Secretary of State has adduced ample evidence to support the suitability and appropriateness of the Regulations.”[¶35] The Regulations are “about saving children from a lifetime of addiction, and children and adults from premature death and related suffering and disease. I therefore reject the Claimants’ case that the Regulations are disproportionate.” [¶36] UK Appeal Court: “None of the claimed alternatives, including increased taxation, would achieve all of the objectives pursued by the Regulations and. . . they should be regarded instead as complementary measures forming part of a comprehensive tobacco control strategy.” [¶243] Australia High Court: plain packaging requirements “are no different in kind from any legislation that requires labels that warn against the use or misuse of a product.” [¶181]EU: “The requirements contained in the Directive relating to the shape, size and minimum content of cigarette packets make a particular contribution to increasing the visibility of health warnings and maximising their efficacy”. . . “the purely economic interest in the greatest possible inter-product and inter-brand competition must be secondary to the protection of human health.” [¶190&193 AG opinion] France Conseil d’État: “Neither the legislature nor the regulatory authorities have. . . disregarded a fair balance between the requirements of the public interest and the protection of the right of property.” [¶29 translated]
The evidence does not show that plain packaging will work to reduce smoking rates	*WTO Australia-Plain Packaging:* The evidence shows reductions in smoking rates and overall tobacco sales accelerated in Australia after plain packaging was implemented. [para 7.896] Plain packaging had a statistically significant impact on lower smoking prevalence and cigarette sales. [para 7.896] UK: “In my judgment the qualitative evidence relied upon by the [Government] is cogent, substantial and overwhelmingly one-directional in its conclusion” that plain packaging will be effective.[¶592] France Conseil d’État: “It is nevertheless clear from other studies and expert reports cited by the Minister of Health, that plain packaging may reduce the attractiveness of tobacco products and to change the perception of consumers. If the effects. . . are difficult to quantify a priori, such regulations must nevertheless be regarded as being able only to help reduce future consumption tobacco products.”[¶28]
Plain packaging is an “expropriation,”“deprivation,” or “acquisition” of the property rights in their trademarks	UK: “title to the rights in issue remains in the hands of the tobacco companies; the Regulations curtail the use that can be made of those [trademark] rights but they are not expropriated.”[¶38] “There are no cases where compensation has been paid for the curtailment of an activity which is unequivocally contrary to the public interest. In my judgment the facts of the case are exceptional such that even if this were a case of absolute expropriation no compensation would be payable.”[¶811] Australia High Court: “Neither the Commonwealth nor any other person acquired any property.” [Official court summary] France Conseil Constitutionnel: “The provisions do not prevent use of brand names allowing consumers to identify the product; the use of the trademark is just strictly regulated; the right to exclude others remains; and therefore there is no deprivation of property.” [¶20 translated]
Plain packaging is incompatible with intellectual property laws and the “right to use” a trademark	UK: “It is no part of international, EU or domestic common law on intellectual property that the legitimate function of a trademark (i.e. its essence or substance) should be defined to include a right to use the mark to harm public health.” [¶40] Uruguay: “under Uruguayan law or international conventions to which Uruguay is a party the trademark holder does not enjoy an absolute right of use, free of regulation, but only an exclusive right to exclude third parties . . . subject to the State’s regulatory power.”[¶271] WTO ruling ¹⁸: “The [WTO TRIPs Agreement] does not generally provide for the grant of positive rights to exploit or use certain subject matter, but rather provides for the grant of negative rights to prevent certain acts. This fundamental feature of intellectual property protection inherently grants Members freedom to pursue public policy objectives. . . .”[¶7.246] Australia High Court: “The right subsisting in the owner of a trademark is a negative and not a positive right. It is to be understood as a right to exclude others from using the mark.”[¶348]
Plain packaging breaches World Trade Organization (WTO) rules and investment treaties	WTO Australia – Plain Packaging: The WTO panel confirmed that plain packaging is not more trade restrictive than necessary to fulfill the public health objectives [para 7.1732] and is a justified restriction on the use of trademarks [para.7.2593]. UK: “The [tobacco companies] submit that WTO TRIPS agreement takes precedence over the FCTC. In my view they must be read consistently one with the other and this is done by rejecting the Claimants’ construction which otherwise effectively emasculates the FCTC.” [¶916] Uruguay: A case brought by Philip Morris under an investment treaty against Uruguay’s 80% Health warnings and Single Brand variant requirement failed. The tribunal also stated that: “nowhere does the WTO TRIPS Agreement, assuming its applicability, provide for a right to use.”[¶262] France Conseil d’État: The provisions in the WTO TRIPS and the Paris Convection “do not in any event prohibit States parties to exercise the option, which is always open to them to adopt measures necessary to protect public health, which can be applied, where appropriate depending on the objective, to certain categories of products.” [¶22 translated]
The laws were adopted without fairness or proper due process	UK: “I can detect not a hint of unfairness in the procedure adopted towards BAT. Their arguments were summarised fairly and squarely and the short point is that Parliament made up its own mind aware of the full range of arguments on all sides of the debate.” [¶42]
Plain packaging is a breach of freedom of expression or the right to conduct a business	France Conseil Constitutionnel: “The legislature intended to deprive these products a form of advertising likely to encourage consumption. . . the impugned provisions do not prohibit either production or distribution, or sale of tobacco or tobacco products; there is no manifestly disproportionate interference with the right to property or free enterprise.” [¶21 translated] UK High Court: The claim includes “a challenge to the right to conduct business under Article 16 of the Fundamental Charter which it is said the Regulations violate. As to this it is clear from case law that this is (for obvious reasons) a highly circumscribed right and all manner of different laws and regulatory measures (tax, environmental, health and safety, etc.) limit the freedom that business otherwise enjoys to do as it pleases… .This ground adds nothing new to the other legal challenges.” [¶41]

Notes

BRITISH AMERICAN TOBACCO, Plain Packaging, accessed at http://www.bat.com/plainpackaging (last visited on January 28, 2021).
JTI, Our Views on Regulation, accessed at https://www.jti.com/about-us/our-business/our-views-on-regulation (last visited on January 28, 2021).
The Guardian, Australia wins international legal battle with Philip Morris over plain packaging, accessed at https://www.theguardian.com/australia-news/2015/dec/18/australia-wins-international-legal-battle-with-philip-morris-over-plain-packaging (Dec. 17, 2015).
E. Crosbie and S. A. Glantz. Tobacco Industry Argues Domestic Trademark Laws and International Treaties Preclude Cigarette Health Warning Labels, Despite Consistent Legal Advice That the Argument is Invalid. Tobacco Control23. Tobacco Control 7 (2014). Available from: http://tobaccocontrol.bmj.com/content/23/3/e7.full;
See also, Physicians for a Smoke-Free Canada, The Plot Against Plain Packaging, available from: http://www.smoke-free.ca/pdf_1/plotagainstplainpackaging-apr1'.pdf (last accessed Feb. 22, 2017); see also the Tobacco Tactics website: https://tobaccotactics.org/wiki/industry-arguments-against-plain-packaging/.
This principle has been confirmed in UK High Court challenge: R (British American Tobacco &Ors) v. Secretary of State for Health[2016] EWHC 1169 (Admin) paragraph 40; the Australian constitutional challenge: JT International SA v. Commonwealth of Australia[2012] HCA 43 (October 5, 2012) paragraph 267; the investment arbitration case PMI v. Uruguay Philip Morris Brand Sàrl (Switzerland), Philip Morris Products S.A. (Switzerland) and Abal Hermanos S.A. (Uruguay) v. Oriental Republic of Uruguay (ICSID Case No. ARB/10/7); and in the WTO dispute panel decision DS174 European Communities — Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs,paragraph 7.210.
R (British American Tobacco &Ors) v. Secretary of State for Health [2016] EWHC 1169 (Admin) paragraph 40.
PMI v. Uruguay Philip Morris Brand Sàrl (Switzerland), Philip Morris Products S.A. (Switzerland) and Abal Hermanos S.A. (Uruguay) v. Oriental Republic of Uruguay (ICSID Case No. ARB/10/7).
European Communities, Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs. WT/DS290/R 15 (March 2005) paragraph 7.246.
Mark Davidson, Plain Packaging of Tobacco and the "Right" Use of a Trade Mark. 8 European Intellectual Property Review 498-501 (2012). Available from: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2137455; T., S. L. Voon and A. D. Mitchell, “Implications of WTO Law for Plain Packaging of Tobacco Products” in Public Health And Plain Packaging Of Cigarettes: Legal Issues, A.D. Mitchell, T. S. L. Voon, and J. Liberman, eds., A.D. Mitchell, T. Voon and J. Liberman, eds., UK, 2012; University of Melbourne Legal Studies Research Paper No. 554. Available from SSRN: https://ssrn.com/abstract=1874593.
See, for example, The UK’s Trade Marks Act 1994 Section 9 (1): “The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.” See also Ireland’s Trade Marks Act 1996 Section 13 (1): “The proprietor of a registered trade mark shall have exclusive rights in the trade mark and such rights shall be infringed by the use of that trade mark in the State without the proprietor's consent.”
Australia, Trade Marks Act 1995. Available from: https://www.legislation.gov.au/Details/C2013C00143.
R (British American Tobacco &Ors) v. Secretary of State for Health [2016] EWHC 1169 (Admin) paragraph 41.
Conseil Constitutionnel, Decision No. 2015–727 DC of January 21, 2015 paragraph 21.
AG’s Opinion on Case C 547/14 Philip Morris Brands SARL and Others (Request for a preliminary ruling from the High Court of Justice (England and Wales), Queen’s Bench Division (Administrative Court), United Kingdom). See Paragraphs 148 to 151. Available from: http://curia.europa.eu/juris/liste.jsf?num=C-547/14.
A review of the Tobacco Act “New Steps Towards a Reduction in Tobacco Use” (SOU 2016:14). Available from: http://tobaksfakta.se/wp-content/uploads/2016/03/Summary1.pdf.
R (British American Tobacco &Ors) v. Secretary of State for Health [2016] EWHC 1169 (Admin) paragraph 406.
See note 16 above at paragraph 651.
A previous WTO panel ruling that did not concern tobacco:European Communities,Protection of Trademarks and GI for foodstuffsWT/DS290/R 15 (March 2005) at paragraph 7.246.

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