Comparing Apples and Oranges in Trademark Law: Challenging International and Constitutional Validity of Plain Packaging of Tobacco Products, 13 J. Marshall Rev. Intell. Prop. L. 130 (2013)

Plain packaging, a new tobacco control tool being considered by a growing number of countries, mandates the removal of all attractive and promotional aspects of tobacco product packages. As a result of plain packaging, the only authorized feature remaining on a tobacco package is the brand name, displayed in a standardized font, size, color, and location on the package. At issue is the meaning of “use” of trademarks on plain packaging, and whether plain packaging amounts to the creation of an invalid encumbrance. The tobacco industry and other regulated sectors (including wine, fast-food, and pharmaceuticals) also believe that plain packaging jeopardizes trademark rights and contravenes certain Constitutional provisions. In particular, they argue that governments do, and are, in fact, capable of “acquiring,” property, or that governments could be construed as “taking” property on unjust terms, contrary to Constitutional guarantees. The tobacco industry’s efforts to fight plain packaging in the courts have, however, proven futile thus far—particularly in Australia. This article, after introducing the reader to the dawn and rationale of plain packaging from a quasi-legal and marketing perspective, examines the compatibility of normative arguments for plain packaging within the international framework for trademark protection (as preserved in the TRIPS Agreement). It then looks at the way in which these arguments and that framework have shaped the constitutional validity of plain packaging of tobacco products in the United States and Australia. In drawing on these jurisdictions that, alongside the European Union, incorporate rather aggressive tobacco control legislation, this paper highlights the nuanced geographic and legal contexts that complicate global regulatory control, which play an important role in advancing global public health in the face of trade-related objections. Finally, this paper proposes methods for dealing with current legal challenges to global tobacco control regulations and suggests that there are strong arguments to deny private entities that seek to establish a successful case by purporting to invalidate plain packaging legislation