DISPUTE SETTLEMENT

DS: Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging

This summary has been prepared by the Secretariat under its own responsibility. The summary is for general information only and is not intended to affect the rights and obligations of Members.

  

See also:

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Current status

 

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Key facts

Short title:
Complainant:
Respondent:
Third Parties:
Agreements cited:
(as cited in request for consultations)
Request for Consultations received:
Panel Report circulated: 28 June 2018

  

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Latest document

  

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Summary of the dispute to date

The summary below was up-to-date at

Consultations

Complaint by Indonesia. (See also DS434, DS435, DS441 and DS458)

On 20 September 2013, Indonesia requested consultations with Australia concerning certain Australian laws and regulations that impose restrictions on trademarks, geographical indications, and other plain packaging requirements on tobacco products and packaging.

Indonesia challenges the following measures:

  • The Tobacco Plain Packaging Act 2011, Act No. 148 of 2011, “An Act to discourage the use of tobacco products, and for related purposes”;
     
  • The Tobacco Plain Packaging Regulations 2011 (Select Legislative Instrument 2011, No. 263), as amended by the Tobacco Plain Packaging Amendment Regulation 2012 (No. 1) (Select Legislative Instrument 2012, No. 29);
     
  • The Trade Marks Amendment (Tobacco Plain Packaging) Act 2011. Act No. 149 of 2011, “An Act to amend the Trade Marks Act 1995, and for related purposes”; and
     
  • Any related measures adopted by Australia, including measures that implement, complement or add to these laws and regulations, as well as any measures that amend or replace these laws and regulations.

Indonesia claims that Australia's measures appear to be inconsistent with Australia's obligations under:

  • Articles 2.1, 3.1, 15.4, 16.1, 16.3, 20, 22.2(b) and 24.3 of the TRIPS Agreement;
     
  • Articles 2.1 and 2.2 of the TBT Agreement; and
     
  • Article III:4 of the GATT 1994.

On 26 September 2013, Guatemala requested to join the consultations. On 27 September 2013, Nicaragua requested to join the consultations. On 30 September 2013, New Zealand requested to join the consultations. On 1 October 2013, Uruguay requested to join the consultations. On 2 October 2013, Ukraine requested to join the consultations.  On 3 October 2013, the European Union and Honduras requested to join the consultations.  On 4 October 2013, Brazil, Canada, the Dominican Republic and Norway requested to join the consultations. On 11 October 2013, Cuba requested to join the consultations. Subsequently, Australia informed the DSB that it had accepted the requests of Brazil, Canada, Cuba, the Dominican Republic, the European Union, Guatemala, Honduras, New Zealand, Nicaragua, Norway, Ukraine, and Uruguay to join the consultations.

 

Panel and Appellate Body proceedings

On 3 March 2014, Indonesia requested the establishment of a panel.

At its meeting on 26 March 2014, the DSB established a panel. Brazil, Canada, China, Cuba, the European Union, Guatemala, Honduras, India, Indonesia, Japan, Korea, Malaysia, Mexico, New Zealand, Nicaragua, Nigeria, Norway, Oman, the Philippines, the Russian Federation, Chinese Taipei, Thailand, Turkey, Ukraine, the United States and Uruguay reserved their third party rights. Subsequently, Argentina, Chile, the Dominican Republic, Ecuador, Malawi, Peru, Singapore and Zimbabwe reserved their third party rights. 

On 23 April 2014, Australia requested the Director-General to compose the panel. On 5 May 2014, the Director-General composed the panel. On 10 October 2014, the Chair of the panel informed the DSB that the panel expected to issue its final report to the parties not before the first half of 2016, in accordance with the timetable adopted by the panel on 17 June 2014 on the basis of a draft timetable proposed by the parties. On 29 June 2016, the Chair of the panel informed the DSB that due to the complexity of the dispute, the panel expected to issue its final report to the parties not before the end of 2016. On 1 December 2016, the Chair of the panel informed the DSB that in light of the complexity of the legal and factual issues that arise in this dispute, the panel expected to issue its final report to the parties not before May 2017. On 21 September 2017, the Chair of the panel informed the DSB that in light of the of the complexity of the legal and factual issues that have arisen in this dispute, the Panel expected to issue its final report to the parties by the end of the third quarter of 2017.

On 28 June 2018, the panel report was circulated to Members.

  1. In respect of the claims developed by the complainants, the Panel found that:
    1. The complainants had not demonstrated that Australia's tobacco plain packaging measures (the TPP measures) are inconsistent with Article 2.2 of the TBT Agreement on the basis that they are more trade-restrictive than necessary to achieve a legitimate objective;
    2. The complainants had not demonstrated that the TPP measures are inconsistent with Article 6quinquies of the Paris Convention (1967), as incorporated into the TRIPS Agreement by Article 2.1 thereof, on the basis that Australia does not accept for filing and protect “as is” every trademark duly registered in the country of origin;
    3. The complainants had not demonstrated that the nature of the goods to which the TPP measures apply (i.e. “tobacco products”) forms an obstacle to the registration of trademarks in violation of Article 15.4 of the TRIPS Agreement;
    4. The complainants had not demonstrated that the TPP measures are inconsistent with Article 16.1 of the TRIPS Agreement on the basis that they stop the owner of registered tobacco trademarks from preventing unauthorized use of identical or similar tobacco trademarks on identical or similar products where such use would result in a likelihood of confusion;
    5. The complainants had not demonstrated that the TPP measures are inconsistent with Article 16.3 of the TRIPS Agreement on the basis that they prevent tobacco trademarks from acquiring “well-known” status, and prevent already “well-known” trademarks from maintaining that status;
    6. The complainants had not demonstrated that the TPP measures are inconsistent with Article 20 of the TRIPS Agreement on the basis that the measures unjustifiably encumber the use of tobacco trademarks in the course of trade;
    7. The complainants had not demonstrated that the TPP measures are inconsistent with Article 10bis of the Paris Convention (1967), as incorporated into the TRIPS Agreement by Article 2.1 thereof, on the basis that the measures compel market actors to engage in prohibited acts of unfair competition, or that Australia fails to provide effective protection against acts of unfair competition;
    8. The complainants had not demonstrated that the TPP measures are inconsistent with Article 22.2(b) of the TRIPS Agreement on the basis that the TPP measures compel market actors to engage in acts that would amount to misleading indications or allegations about product characteristics within the meaning of Article 10bis(3)(3) of the Paris Convention (1967) in respect of geographical indications;
    9. The complainants had not demonstrated that the TPP measures are inconsistent with Article 24.3 of the TRIPS Agreement on the basis that the protection that geographical indications enjoyed immediately before 1 January 1995 has been diminished as a result of the TPP measures; and
    10. Cuba had not demonstrated that the TPP measures are inconsistent with Article IX:4 of the GATT 1994 on the basis that they do not constitute “laws and regulations relating to the marking of imported products” within the meaning of Article IX:4, and that in any case, Cuba had not demonstrated that the restrictions imposed by the TPP measures would lead to a material reduction in the value of the Habanos sign and the Cuban Government Warranty Seal within the meaning of Article IX:4.
  2. The Panel made no findings in respect of the complainants' claims that the TPP measures are inconsistent with Article 2.1 of the TRIPS Agreement (incorporating Article 6bis of the Paris Convention (1967)), Article 3.1 of the TRIPS Agreement, Article 2.1 of the TBT Agreement, and Article III:4 of the GATT 1994, in light of the absence of argumentation put forth by the complainants in respect of these claims.

 

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