Regulations on plain packaging and the effects on trade mark
The South African tobacco industry was quick to counter when
reports surfaced that South Africa could possibly follow suit in
implementing plain packaging legislation following Australia's
plain packaging reforms targeted at its tobacco industry. This
legislation typically requires cigarette and tobacco products to be
sold in identical, prescribed packaging with graphic images of
potential side effects of smoking and the brand name displayed in
regulated font and size.
Tobacco and cigarette conglomerates may be used to being at the
receiving end of censure from governments at this point. Many
countries, including South Africa, have already banned most forms
of advertising of these products to the public. However, this kind
of legislation is considered a first in regulating the form in
which the products are packaged and sold to the public.
With various governments indicating that they were likely to
jump on this bandwagon, South Africans may soon be faced with
graphic images of throat cancer instead of camels or colourful
cigarette boxes in stores. In fact, our local government, soon
after the developments in Australia, made it clear that it wished
to introduce similar laws.
To understand the possible implications of these regulations,
consider the very nature and function of a trade mark, namely to
act as a badge of origin. When a customer is faced with a brand
named product, the brand identifies where the product comes from
and to some extent, an inferred assurance of the quality. For
registrability, a proposed trade mark must be capable of
distinguishing the goods on which it is applied from other goods in
the market. Simple trade marks, when not comprised of invented
words but rather ordinary English words often struggle to overcome
this first hurdle in the registration process. To overcome this,
applicants often supplement the mark with visual elements to add
distinctiveness. In trade, the visual representation of a trade
mark often includes a logo and/or colourful packaging to make the
product appealing to the eye. The trade mark then has an
advertising function which makes the product marketable in
Registered trade marks that are not distinctive are vulnerable
to removal from the Trade Marks records by any interested party.
The implementation of plain packaging regulations requiring same
colour, font and size of products may threaten the distinctiveness
of some registered marks and possibly result in the removal of
these marks if all distinctiveness is lost. Additionally, an
intention to use a trade mark is an essential requirement for trade
mark protection in South Africa and if the registered mark is not
used it may be removed. Since the use of brands incorporating
logos, colours or any other stylised form would not be allowed in
terms of plain packaging regulations, the rights in these trade
marks would be tested.
These restrictions will likely also result in the infiltration
of counterfeit products in the market. Where product packages are
forced to have the same or similar packaging with inconspicuous
branding, third parties are bound to push the limits of
infringement by copying, making the task of enforcement of rights
even more difficult for intellectual property holders.
Intellectual property rights are not absolute rights and may be
subjected to reasonable and justifiable limitations. As in
Australia, our government may be successful in its promulgation of
plain packaging regulations but there is no denying that these
restrictions would have a resounding effect on the rights of
affected trade mark holders and they would be wise to heed the
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.
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