Trademark and Public Policy


Plain packaging measures for tobacco products typically involve prohibition on the use of certain marks, logos, shape marks, colour marks and stylized marks. It requires the word mark to be used in a special form of packs, for eg: “using plain block letters”. Such measures are trade restrictive and subject to scrutiny under the trade laws. Essentially for manufactures, marks are necessary to : (a) to differentiate their products and (b) to guarantee the origin of goods. Marks helps to distinguish between goods and services, which are essential features in trade and commerce. Hence, if a WTO member cannot satisfy the burden of showing that a measure such as plain packaging will achieve its legitimate policy objectives, then the measure can be found incompatible with the TRIPS Agreement


TRIPS ARTICLE 15.4 states that “nature of the goods or services to which a trademark is applied shall in no case form an obstacle to registration of the trademark.”

So, measures preventing the registration of a TM only because it is related to tobacco products violate TRIPS.

TRIPS ARTICLE 16 notes the rights of the TM owner. It says that” the owner of the registered trademark shall have exclusive rights to prevent third parties not having owner’s consent.” So, in a way the TM rights are negative rights.


(1) L’Oreal vs Bellure:

The CJUE stated that, “The stronger the mark’s distinctive character and reputation are, the easier it will be to accept the detriment has been caused to it.”

(2) The WTO Panel in “EC-GI”, referred to the interest of the mark owner, ie , every TM owner has legitimate interest in preserving the distinctiveness and or capacity to distinguish so that it can perform its function.

TRIPS ARTICLE 20, is key to assessing whether the measures like the plain packaging are compatible with the TRIPS or not. Article 20 states that the “use of TM will not be unjustifiably encumbered by special requirement.”

The general arguments is that first sentence of Article 20 seems to imply “right to use”.


Article 20 can be classified into 3 components:

Firstly, is there any Special Requirement? Secondly, does the special requirement cause any encumbrances in the use of the mark? If yes, then whether such encumbrance due to a certain special requirement is justified or not?

The term “requirement” was dealt by WTO panel in Indonesia Automobiles , where it said that the mark should be in conjunction with other marks.

Now the requirement must also be special: the WTO Panel w.r.t Article 13 of TRIPS in US Art 110(5) of the Copyright Act noted that the term special denotes to an individual or a limited purpose.

The measure of Plain Packaging does come under the ambit of a special requirement, but banning a ‘non-word’ mark in totality is the highest encumbrance possible. The question is whether the Article 20 provides for a complete ban or not. In my opinion, complete ban overrides the principle of encumbrance in Article 20.

TRIPS Article 8, is an important provision as it allows the member states to adopt necessary measures to promote public health. In my opinion, it overrides the other provisions of TRIPS and restricts the use of a TM. It is open to scrutiny under Article 20 of the TRIPS even if it is related to public health.



The article allows to register the TM independently, ie, does not depend on the nature of the goods to which a TM has to be applied. The nature of the goods, will not form an obstacle for the registration of the mark.


A TM can be denied registration when:

1. The TM infringes the rights of a 3rd party.

2. When denied of any distinctive character.

3. Against morality of public order of the particular country.

The third point can be used to interpret measures like plain packaging. But the public order and morality concerns the MARK and not the PRODUCT, as according to the Bodenhausen, 1967 ( Guide to Paris Convention).


Both the TRIPS and Paris Convention promote the use of a mark irrespective of the nature of goods. It has a positive spirit of using the mark. Public health is important but completely banning the use of non word marks (like in the case of plain packaging) is incompatible with TRIPS and Paris Convention. In the US-Shrimp case; it was held that a “ balance must be held etween the rights of the members states vis-a-vis its duties”.

A public policy can be justified if it satisfies the Article 20 of TRIPS. And to check if the policy is necessary or not in accordance to Article 8 of TRIPS, it should be tested on the touchstone of Article XX(b) of the GATT. In case of EC- Asbestos , the Panel held that the measure passes the necessity and is justified. Hence, there are measures which are compatible with TRIPS and also promote the public policies and measures, but the measures should not limit the basic use of a mark.

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