Internationally there is a potential legislative threat to trade
mark law in the form of plain packaging legislation. Australia was
the first country to adopt such legislation, the Tobacco Plain
Packaging Act, 2011 ("the Act") restricting and
prohibiting the use of logos and the like on the packaging of
tobacco products. The Act imposes significant restrictions on the
colour, shape and finish of retail packaging for tobacco products.
It prohibits the use of trade marks on such packaging, other than
in a manner specifically permitted. Therefore, trade marks can only
be used in a bland, word mark form and no logos, device marks or
label marks may be featured on the packaging of tobacco products.
As French CJ, from the High Court of Australia explained:
"...the Tobacco Plain Packaging Act is part of a
legislative scheme which places controls on the way in which
tobacco products can be marketed."
The Australian legislation is sure to set an international
trend, with countries such as New Zealand and Namibia already
working on legislation to restrict the use of trade marks on the
packaging of tobacco products. Professor Owen Dean, of the Faculty
of Law at Stellenbosch University claims that it can be safe to
assume that the South African Government will in due course publish
legislation that clones the Act, which will introduce the same
Recently in South Africa, similar restrictions have been placed
on foodstuffs for infants and young children. On 6 December 2013
regulation 7 of Regulations R991, relating to foodstuffs for
infants and young children came into operation. This regulation
prohibits any advertising practices in respect of infant and
follow-up formula, powdered milk or powdered drinks, as well as
feeding bottles, teats and feeding cups, marketed as suitable for
infants or young children. On 6 December 2014 regulations 2 to 6 of
R991 will come into operation which will place strict requirements
on the labelling and packaging of the designated products. These
include the prohibition of any graphical representation apart from
those necessary to show the correct method of preparing and using
the product. The company logo and brand name will be permitted
provided that they do not contain a picture of an infant, young
child or other humanised figure. The label of the relevant product
may also not refer to, or advertise any other designated
Plain packaging legislation could have numerous effects on trade
marks and trade mark law. Firstly, Dean makes a compelling argument
that the proposed ban of the use of brand logos on tobacco
packaging constitutes the deprivation of property and that plain
packaging legislation would be unconstitutional. Dean argues that
deprivation of trade marks will take place if the state prevents
their use and thereby destroys them. On the other hand, former
Supreme Court of Appeal Deputy President, Judge Harms, believes
that any limitation, direct or indirect, on the use of tobacco
would be constitutionally justifiable.
Secondly, trade marks are considered an extremely valuable
commercial asset. This brand equity essentially derives from the
manner and the extent of the use of a trade mark. Thus, the use of
a trade mark has an enormous financial and commercial implication.
Plain packaging legislation could cause trade mark use to cease and
brand equity could potentially dissipate. Consequently, Harms is of
the opinion that plain packaging will lead to more counterfeiting
and smuggling. A diluted trade mark can easily be counterfeited,
especially if trade mark owners no longer have the ability or
motivation to contain smuggling.
It would appear that the Government is seeking to achieve social
ends through the prohibition of the use of trade marks. Their
purposes such as reducing the consumption of tobacco products or to
promote breastfeeding are commendable. However, attempting to
achieve these aims by targeting the use of trade marks is not
necessarily reasonable. If South Africa should adopt legislation
similar to the Australian Tobacco Plain Packaging Act and in the
event that Regulation R991 relating to foodstuffs for infants and
young children is challenged before the South African courts, it
should be examined afresh and through the prism of the South
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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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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