South Africa: Plain Packaging

Last Updated: 22 April 2013
Article by Alicia Castleman

Most Read Contributor in South Africa, September 2016

The issue of a plain packaging requirement for tobacco products has been a hot topic since mid- 2012. That’s when the Australian High Court ruled that the Australian law that requires cigarette manufactures to sell their products in packages which contain little more than a prominent health warning and the brand name of the product in small and plain script – no stylizations, logos, colours, or any of the other identifying features typically associated with products. When the South African Health Minister, Aaron Motsoaledi, indicated that he would like to see similar legislation enacted in South Africa, there was an immediate reaction. This came in the form of warnings that such laws would amount to an unconstitutional expropriation of (intellectual) property, which would require the government to pay huge sums in compensation to cigarette manufacturers who had been deprived of their trade marks.

One of South Africa’s leading experts on intellectual property law, recently-retired Deputy President of the Supreme Court of Appeal, Louis Harms, has now waded into the debate. Harms delivered a paper at the University of Pretoria recently entitled ‘Plain Packaging and Its Impact on Trade Mark Law.’   Harms expressed his view regarding the proposed legislation by saying that: ‘I dislike the idea of living in a nanny state...we have to accept that the State has assumed the right or obligation to decide which desires are acceptable and that one should live one’s life according to its dictates... in that regard the doctrine of voluntary assumption of risk is dead.’ And he makes it clear that he thinks the threat extends beyond tobacco:  ‘On the horizon looms a potential threat to trade mark law in the form of plain packaging legislation... it will begin with tobacco products but there is a real likelihood that it will spread to other products.’

Harms traces the history of plain packaging and points out the World Health Organisation (WHO) Framework Convention on Tobacco Control says that member states must adopt effective measures to ensure that tobacco product packaging contains health warnings. The Guidelines that have been issued say that countries should consider adopting measures to restrict or prohibit the use of anything other than the brand name in conventional font (in other words logos, colours and the like) in an attempt to increase the noticeability of the health warning. Australia has adopted the Guidelines in its legislation and the Australian court has ruled that the law is constitutional because, even though trade marks are property, there has been no acquisition of that property despite the fact that cigarette companies' rights have been denuded. It said this ‘Taking involves deprivation of property seen from the perspective of its owner. Acquisition involves receipt of something seen from the perspective of the acquirer. Acquisition is therefore not made out by mere extinguishment of rights.’

Harms then looks at whether similar legislation in South Africa would pass constitutional muster. In the process he discusses trade mark law in general terms, saying that he believes ‘a) that trade marks, as property, are entitled to protection; b) that they are valuable and socially and commercially important; but c) that no rights are absolute.’ In fact, as we now know from the Constitutional Court’s decision in the 2005 Laugh- It-Off case, trade marks can ‘be trumped by other rights.’  Harms discusses the fact that a plain packaging requirement  will affect the basic function of a trade mark, which is to serve as a badge of origin and avoid consumer confusion, as well as the  related advertising function of ‘acting as silent salesmen conveying psychological messages about the merit of the product.’ A plain packaging requirement will, Harms argues, affect these functions, because if a brand owner cannot use its trade mark in the way it wants to use it the trade mark loses distinctiveness, making it more difficult to prevent confusion.  A plain packaging requirement also impacts on the principle that a registered trade mark must be used to remain valid.

Notwithstanding this, Harms feels that plain packaging legislation will not contravene the expropriation provision of the Constitution, Art 25(1),  because it ‘does not deprive the trade mark owner of any trade mark right, but only regulates or limits the exercise of that right.’  Harms points to the fact that the Constitutional Court  refused BAT’s request for  leave to appeal the recent decision of the Supreme Court of Appeal that the ban on tobacco adverting is a justifiable limitation of the right of free expression. And he points out that trade mark law excuses non-use in cases of special circumstances: ‘As for being struck off the register, the Act has an inbuilt protection: a trade mark may not be removed on the ground of non-use if that was due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark.’

Harms goes for a very different approach, suggesting that the government can’t afford to go the plain packaging route. He discusses the ‘tension between health and state income’, and  argues that, in the same way that the government seems loathe to ban alcohol advertising because of the economic impact that such a ban will have, so it will be very reluctant to give up the income it makes from tobacco. ‘The choice for governments appears to be between restriction and prohibition... Without being too cynical, the reason why (government does not ban tobacco) is because government does not wish to forego the resultant income. Our government, it would appear, earned R32 billion per annum on tobacco excise and related taxes before the increase announced on 27 February 2013.’

Harms points out those cigarettes are one of the most counterfeited products, and that in February 2013 the government signed a convention to contain smuggling of tobacco products.  He points out that smugglers don't pay the high excise taxes that the manufacturers pay, and that the government loses some R8 billion per annum through cigarette smuggling. And he argues that any measures that will make it more difficult for trade mark owners to stop counterfeits - such as laws that dilute trade mark rights - will lead to more counterfeiting and a greater loss to the fiscus.   ‘This’, says Harms, ‘is known as the law of unintended consequences.’

It will be interesting to see if Harms is proved right?

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”

Mondaq Advice Centre (MACs)
Related Video
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.