IMPLEMENTATION OF PLAIN PACKAGING AND ITS IMPACT ON REGISTERED TRADEMARK RIGHTS

09.04.2020Merve Macit

A seminar was held on the topic of “Implementation and Global Status of Plain Packaging of Cigarettes and The Relationship Between the Implementation of Plain Packaging and Registered Trademark Rights” at the Turkish Patent and Trademark Office in Ankara on 26 February 2020. The speaker of the seminar was Mr. Önder Erol Ünsal, who is a trademark examiner at the Board of Re-Examination and Re-Evaluation and the founder and author of “IPR Gezgini” that is a well-known IP Blog.

The speech of Mr. Önder Erol Ünsal started with the discussion of the reasoning behind plain packaging, which gave way to the explanation about the requirements and implementation of plain packaging. 

Briefly going through the history of plain packaging, Mr. Önder Erol Ünsal mentioned that the proposals to introduce plain packaging date back to 1990s and the first country to impose plain packaging laws in 2012 was Australia, which was followed by France, United Kingdom, New Zealand, Norway, Ireland, Thailand, Uruguay, Saudi Arabia, Slovania, Turkey, Israel, Canada and Singapore.

Mr. Önder Erol Ünsal further specified that the additions made to provisions three and five of Article 4 of the Law on Prevention and Control of Hazards of Tobacco Products No. 4207 forms the legal basis of the implementation of plain packaging in Turkey and the Regulation on Procedures and Principles Regarding the Supervision, Labelling and Type of Production of Tobacco Products published in the Official Gazette on 1 March 2019 forms the framework of the implementation of plain packaging. He added that the compliance period expired as of 5 January 2020, since when it has been forbidden to keep the products that are not in conformity with the new regulation on the market.

The speech of Mr. Önder Erol Ünsal followed with a brief overview of the worldwide complaints  against plain packaging that mainly evolved around the claims that the tobacco producers are prohibited from using their registered trademark rights as a result of the implementation of plain packaging, which is a breach of international trade agreements, including TRIPS versus the main justification of public health under Article 8 of TRIPS among others.

The brief overview of the worldwide implementation of plain packaging led to a discussion about the fate of trademark registrations that are no longer allowed to be used under Tobacco Plain Packaging Regulations. What would happen to the trademark registrations after five years of lack of use? Would the lack of use of trademark registrations due to the Tobacco Plain Packaging Regulations be considered to be justification for non-use in case of cancellation actions to be filed against these registrations on the basis of non-use? Similarly, would the lack of use of these trademark registrations due to the Tobacco Plain Packaging Regulations be considered to be justification for non-use in case of non-use defense to be faced in the opposition, invalidation and infringement actions filed on the basis of these regisrations? Since there are no specific provisions defining circumstances that would be considered as justification for non-use in the Industrial Property Law no. 6769 or The Regulation on the Implementation of the Industrial Property Law, the answers to these questions are not definite and would be in the discretion of the examiners at the Turkish Patent and Trademark Office and courts and court-appointed experts and may be shaped depending on the case law. Nevertheless, the commonly shared opinion in the seminar was that a change in Regulation should be considered to be a justifiable reason for the lack of use of a trademark. 

One of the questions raised during this discussion was related to the registration of fresh applications including elements, use of which are prohibited by Tobacco Plain Packaging Regulations. The question  was whether such applications would be rejected on absolute grounds on account of provision Article 5(i) of the Industrial Property Law no. 6769 that prohibits registration of “signs which are contrary to public policy or to accepted principles of morality.” The issues that Tobacco Plain Packaging Regulations concern the use of the trademarks at issue and no amendments have been made in the Industrial Property Law no. 6769 or The Regulation on the Implementation of the Industrial Property Law make us think that such fresh applications are expected to pass the examination on this ground. However, the practice of the Turkish Patent and Trademark Office within this framework is not definite, yet. 

As a whole, it has been an efficient seminar that has provided the participants with an overview of the implementation and global status of plain packaging and created an interactive atmosphere for discussion of the fate of trademark registrations and new applications, which include elements that are not allowed to be used by the Tobacco Plain Packaging Regulations.

Ultimately, our opinion is that; inevitably, tobacco companies will still be in a position to protect their trademarks, some of which are very well known and iconic, against illegal use by third parties even when use may not be on a product related to tobacco or cigarettes. When evaluating the “justifiable reason” for non use, the balance of interests will have to be weighed. It may also be in favour of public interest to allow IP right holders to fight against illegal activities of third parties by being flexible in evaluating “justifiable reason” and letting IP right holders use their rights to prevent others. After all, it is a general principle that an IP right should provide its owner with an exclusive right to prevent others, while not necessarily providing an explicit right to use.

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