AJPark

Under the proposed new rules, tobacco in Australia can only be sold in plain packages without any logos, colours, images or stylised writing.  Brand names can only be displayed in a small, generic font.

These new rules are part of ongoing measures to reduce smoking in Australia.  Tobacco advertising is already banned in Australia and tobacco manufacturers are not allowed to use descriptors such as ‘mild’ or ‘light’ which may mislead consumers about the dangers of their products.

How will this affect tobacco trade mark registrations in Australia?

Tobacco trade marks in Australia that are not plain word registrations could be vulnerable to revocation for non-use. Tobacco companies may consider refiling all their word trade marks as plain words.

The Australian Trade Marks Act provides for two types of non-use revocation. The first applies where the owner either had no intention to use the mark at the time of registration or has never used it. The second applies where the owner has not used the mark for an uninterrupted period of three years.

There is a defence to non-use actions of the second type where non-use arises from situations out of the owner’s control.  This includes government enforced non-use.  Even if the new rules are adopted, tobacco companies would have a defence to any non-use actions provided they intended to use marks at the time of filing and have in fact used them. The same defence does not apply to the first type of revocation.

Also, the Act prohibits the registration of trade marks which, when used, would be contrary to law.  It appears that under this provision it will not be possible to register stylised or logo tobacco marks in Australia once their use is prohibited.

Is New Zealand likely to follow suit?

Like Australia, New Zealand has smoke-free legislation prohibiting tobacco advertising.

However, unlike in Australia, the New Zealand Trade Marks Act broadly provides that a registration may not be revoked for non-use if its non-use is due to special circumstances that are outside the owner’s control.  This applies to any non-use action regardless of whether the trade mark has ever been used. This provision should protect a tobacco mark registered for merchandise which may not be allowed to be sold due to the advertising ban.

The Trade Marks Act also provides that trade marks are not registrable if their use would be contrary to law. However, a specific exception is made for trade marks the use of which is restricted or prohibited under the Smoke-free Environments Act. This indicates the New Zealand government is taking into account the trade mark rights of tobacco manufacturers. The government may include a similar exception for trade marks the use of which is prohibited or limited under any new legislation on packaging that may mirror Australia’s new law. 

At this stage, there are no public plans to introduce similar packaging rules in New Zealand, but then those in Australia seem to have come out of the blue. There is no doubt the New Zealand Government will watch developments over the ditch with interest.

For more information please contact

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  Damian Broadley

  Partner

  
  

  Jude Antony

  Executive