Australia: Tobacco plain packaging laws: the Australian experience

Last Updated: 21 December 2014
Article by Selwyn Black


With intellectual property increasingly forming a greater part of private wealth, it is interesting to review how the Australian High Court dealt with the Australian Tobacco Plain Packaging Act 2011 ("the TPP Act"), which required retail tobacco products to be sold in plain packaging. The key issue for the High Court (the Australian equivalent of the US Supreme Court) was whether the TPP Act breached section 51(xxxi) of the Australian constitution. The case was JT International SA v Commonwealth of Australia; British American Tobacco Australasia Ltd & Ors v The Commonwealth of Australia ("the Plain Packaging Case").

The parties

The plaintiffs in the Plain Packaging Case were tobacco companies which manufactured, packaged and sold tobacco products. The TPP Act prevented the plaintiffs from exploiting their intellectual property rights on the packaging of their tobacco products which they had previously enjoyed (including the use of trade marks, and goodwill in their tobacco packaging get-up). The plaintiffs argued that this constituted an acquisition of their property not on just terms, in breach of section 51(xxxi) of the Australian constitution. This section reads:

The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to ... the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws.

This section may be likened to part of the Fifth Amendment of the US constitution which reads:

Nor shall private property be taken for public use, without just compensation.

The case turned on 2 questions:

  1. Was the plaintiffs' intellectual property rights 'property' for the purpose of section 51(xxxi)?
  2. If the answer to 1 was yes, did any provisions of the TPP Act result in an acquisition of that 'property'?

Was the plaintiffs' intellectual property rights 'property' for the purpose of section 51(xxxi)?

The High Court recognised that intellectual property rights of the plaintiffs including tobacco related trade marks, cigarette packaging get-up, copyright, design patents, packaging and licensing goodwill, and intellectual property licensing rights fell within the concept of 'property' for the purpose of section 51(xxxi). That some intellectual property rights were created by way of legislation was irrelevant to that characterisation.

In making this judgment, the court:

  1. gave consideration to relevant Australian intellectual property legislation and case law which state that intellectual property rights are personal rights; and
  2. rejected the argument that because intellectual property rights:
    1. served a public purpose; and
    2. were negative rights in nature,
    3. they could not be characterised as property.

Did any provisions of the TPP Act result in an acquisition of that 'property'?

The majority of the High Court distinguished between:

  1. the taking of property (a deprivation of property from the perspective of the owner of the property); and
  2. the acquisition of property (a receipt of property from the perspective of the acquirer of the property).

It was held that an acquisition is not made out merely by extinguishing rights. In other words by prohibiting the exercise of intellectual property rights on cigarette packs, the Government was not appropriating those rights for itself and so there was not a prohibited acquisition by the Government of private property.

Further, the majority judgment noted that such an acquisition has to be proprietary in nature. The Australian Government did not acquire any proprietary benefit from the imposition of the TPP Act on the plaintiffs. Accordingly the constitutional challenge to the TPP Act failed.

The Fifth Amendment

Interestingly, one of the Australian judges notes the similarities and differences between section 51(xxxi) of the Australian constitution with the relevant part of the Fifth Amendment to the US constitution. Similarities include:

  1. the term 'property' in each respective constitution, refer to the group of rights inhering in ownership and not in any "vulgar and untechnical sense", as stated in United States v General Motors Corporation 323 US 373 at 377-378 (1945).

Differences include:

  1. the Fifth Amendment is expressed as a negative statement, whereas section 51(xxxi) states what action Australian Parliament may positively take.

Other attempts to invalidate the TPP Act

World Trade Organisation challenges

Ukraine, Honduras, Cuba and the Dominican Republic have challenged the Australian laws by filing requests for consultations through the World Trade Organisation, a first step to challenging the Australian laws in the World Trade Organisation.

Hong Kong agreement

Although the TPP Act survived the constitutional challenge of the Plain Packaging Case, a second basis in which it is being contested is pursuant to the 1993 international agreement between the government of Australia and the government of Hong Kong for the promotion and protection of investments ("Hong Kong Agreement"). Philip Morris Asia ("PMA"), another tobacco company, is arguing that the TPP Act breaches:

  1. article 6 of the Hong Kong Agreement (on the basis that Australia is depriving or expropriating Philip Morris Asia's investments or assets); and
  2. article 2.2 of the Hong Kong Agreement (on the basis that Australia is not treating Philip Morris Asia's investments fairly and equitably).

This challenge is currently being arbitrated pursuant to United Nations Commission on International Trade Law Arbitration Rules. Australia has won a preliminary battle in this case, with the Permanent Court of Arbitration permitting Australia to challenge Philip Morris Asia's legal standing in the matter. This is on the basis that Philip Morris Asia (incorporated in Hong Kong) allegedly only purchased shares in its Australian arm in order to allow it to challenge the TPP Act under the Hong Kong Agreement.

The case is set for a three day hearing on preliminary objections in Singapore in early 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions