Legal issues in detail

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 4 countries against Australia is awaiting the panel’s ruling.

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 them out in readily comprehensible terms. However, assistance is also available from the CTFK International Legal Consortium to help state officials understand these issues or respond to tobacco industry threats and allegations.

1.1 The “right to use” a trademark

The tobacco industry claims that plain packaging interferes with itstrademark rights in a way that conflicts with domestic, regional, and international intellectual property laws and obligations. Most of itsarguments rely— in some way— on the contention that registered trademarksafford the owner a positive right to use that trademark. 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 as either an implicit or explicit right.

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

In recent decisions, courts and tribunals havealso rejected this argument. Instead, these bodies have adopted a traditional view thattrademark rights allow the owner to prevent other people from using the trademark. This “right to exclude”does not include an absoluteright to use the trademark in any and all situations but is limited, particularly where a government is regulating and limiting the use inthe public interest.⁵

• In the UK, in the judgment of the High Court in relation to 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 State”⁷ [¶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]

• A WTO dispute panel (in relation to a case not concerning tobacco trademarks) has previously 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 legislation clearly sets 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 the plain packaging legislation (see GUIDE 3.2 Draft the Law and the EACH CLAUSE EXPLAINED page of the Tools and Resources) possibly an explicit exemption will need to be included.

1.2 Compatibility with national trademarks laws / design acts

As indicated above in section 2.1, 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 raise some other issues.

While there may be some complexity to these legal arguments, they are basically a different way of arguing for a “right to use” the tobacco trademarks. As shown in 2.1 above, these arguments have been rejected by the Courts.

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

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. These claims that plain packaging amounts to expropriation of these 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 Conseild'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 Case Summaries 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 Case Summaries 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 criticise the supporting evidence, either as individual studies or as a whole. Full details are provided on the Opposing Arguments (and how to counter them) page of the Tools and Resources.

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 the evidence pages of the Tools and Resources.

• The High Court challenge against the UK Regulations was the first (and as yet only) 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]

• Mr Justice Green made particular critical note of the fact that the tobacco companies refused to provide access to any internal research or documentation on plain packaging, even to their own instructed experts. More detail on this is given below in the case summary.

See the Case Summaries page for more details on these UK challenge.

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 increase.”¹⁶

• And “the evidence does not show that there are no equally effective but less restrictive alternatives.”¹⁷

• 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 Conseild'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 / Consultation).

See the Case Summaries 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 may 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.

At the time of writing, a WTO panel is determining complaints against Australia’s plain packaging laws brought by Cuba, the Dominican Republic, Honduras, and Indonesia. The ruling is expected in July 2017. More details about this case are given in the Case Summaries page. The main claims made by the complainant countries are that plain packaging:

• 1. 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.

• 2. breaches the WTO’s Agreement on Technical Barriers to Trade because it constitutes a “technical regulation” that is “more trade-restrictive than necessary to fulfil a legitimate objective.”

• 3. 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, available here: http://dfat.gov.au/international-relations/international-organisations/wto/wto-dispute-settlement/Pages/wto-disputes-tobacco-plain-packaging.aspx

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. The full publication is available here: http://www.who.int/tobacco/publications/industry/plain-packaging-tobacco-products/en/

The WTO dispute panel determining the complaints against Australia (and ultimately the appellate body if the ruling is appealed) will be the final arbiter of these issues.However, it is 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 has brought two international 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 and the awards is given below.

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.

2 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 Conseild’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	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 Conseild’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] FranceConseilConstitutionnel: “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	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] FranceConseild’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	FranceConseilConstitutionnel: “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]

3 FURTHER INFORMATION AND RESOURCES

The McCabe Centre for Law and Cancer serves as a WHO FCTC Knowledge Hub on legal challenges to tobacco control laws. It has information on domestic legal challenges to WHO FCTC implementation, including the challenges to plain packaging laws. There is also more information about trade and investment law challenges.

http://www.mccabecentre.org/knowledge-hub/

The CTFK website has pages on trade and investment law which include useful summaries of key legal decisions including the UK High Court case and the PMI v Uruguay decision.

http://global.tobaccofreekids.org/en

The O’Neil Institute has produced a litigation guide for Latin America that considers the legal arguments raised by the tobacco industry in the region and includes similar issues to those discussed in this Toolkit but in a region-specific context.

http://www.law.georgetown.edu/oneillinstitute/documents/2012_OneillTobaccoLitGuide_ENG.PDF

Missing End Notes