The Tobacco Product Directive: Commission cuts to the chase

Not for the first time, the IPKat finds himself hosting another piece on the treatment of trade marks and branding in the context of proposals to discourage the dangerous and unhealthy uses to which tobacco is put.   Caught in the crossfire between the tobacco giants (who have the funds with which to fight, plus the loyalty of consumer addiction on their side) and the European Commission (armed with the de jure power to propose legislation and the de facto power to push it through), the position of tobacco brands is unenviable, if not untenable.

In this guest contribution, veteran trade mark commentator Christopher Morcom QC argues that, in the gathering momentum towards amendment, the role and function of trade mark rights has been insufficiently considered.  This is what he writes:

"The European Commission's revised Tobacco Product Directive published today: the threat to intellectual property rights

As is now well-known, since 1 December 2012 tobacco products have to be sold in plain packaging format in Australia, although it is understood that there are outstanding legal challenges to the law there. Today, the EU Commission has published its proposal on a revised Tobacco Product Directive (see Commission’s press release  and text of proposal). In essence, the Commission has accepted Directorate General (DG) SANCO's proposed measures. Among those measures are: a requirement for combined warnings (picture and text) covering 75% of the front and the back of packs, general warning and information message on both sides of the packs, 'standardization' of packs (same shape and format) and possibility for member states to introduce 'plain packaging'. Such requirements are particularly likely to affect IP rights.

Commissioner Barnier

Attention should be drawn to the fact that Commission's inter-service consultation (the internal process of the Commission under which a legislative draft is submitted to the services of the DGs) on DG SANCO's proposals commenced on 30 November, and only lasted for 12 days, closing on 11 December. Further, according to reports in European media, the President of the Commission, Jose Manuel Barroso, gave instructions to the DGs not to issue a 'negative opinion' so as not to block the revision process. It also appears that DG Internal Market and Services ('DG MARKT'), led by Commissioner Michel Barnier, did not submit any remarks during the inter-service consultation process which might have been seen as an effort to ensure due protection for IP rights, especially trade marks. If that is indeed the case, then the procedure adopted in the consultation process would seem to have been inadequate. It is DG MARKT that has the responsibility to ensure that legislative proposals emerging from the Commission will take into account the legitimate interests of owners of IP rights, and also the interests of consumers in distinguishing the products of different undertakings. That includes due recognition of treaty obligations on Member States, such as TRIPS, the Paris Convention, and the ECHR, intended to protect such rights. A number of EU and other international IP associations have expressed their concerns in these respects during the inter service consultation process.

It is now seems clear that IP rights have not received adequate consideration in the preparation of this draft Directive. The proposed provisions affecting packaging are clearly, it is suggested, prejudicial to IP rights, and in particular to the normal use of trade marks in the Single Market. In putting forward the proposals, the EU Commission is sending a negative message to industry. DG MARKT should instead be encouraging a competitive market, in tobacco, as well as other legal products. It has an important role to play, in motivating business to create and to innovate, and in particular to ensure that IP rights are duly protected. Enough has been said to Commissioner Barnier, by the organisations already mentioned, to alert him to the issues which the proposals raise. He seems so far to have ignored these issues. Industry is entitled to have expected otherwise.

The Commission's text will be conveyed to the National Parliaments of the EU Member State at the same time as being sent to the European Parliament and Council. It is therefore now in the hands of MEPs and member states of the EU to take the action that is needed, and to limit the unwarranted measures proposed by the Commission".

MARQUES, the organisation for trade marks in Europe, has already issued its own, equally monitory, press statement (see Class 46 here), and the Kats expect that there will be more.

"Cat to the chase"? DG MAR-KAT  races
to make its inter-service comments before
DG SANCO makes its decision

Has the consideration process been inadequate? Anyone who has been involved in the recent rush to secure the European patent package may wonder whether there is any point of consultation and expert consideration at all, while those folk whose main interest lies in the field of copyright and the information society may be wondering why their sector has been singled out for so much careful consideration, for so long and in so much depth?  Merpel's theory is that the Commission is best at weighing up the pros and cons of IP-related issues when it hasn't a clear idea what it wants to do, but tends to cut to the chase when its various bits have already made their mind up ...