WORLD TRADE  
ORGANIZATION   
WT/DS435/16 
17 October 2012  
 
(12-5631) 
 Original:   English 
  
 
AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS,  
GEOGRAPHICAL INDICATIONS AND OTHER PLAIN PACKAGING REQUIREMENTS 
APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING 
 
Request for the Establishment of a Panel by Honduras 
 
  The following communication, dated 15 October 2012, from the delegation of Honduras to the Chairperson of the Dispute Settlement Body, is circulated pursuant to Article 6.2 of the DSU. 
 
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On 4 April 2012, Honduras requested consultations  with Australia pursuant to Article 4 of the 
Understanding on Rules and Procedures Governi ng the Settlement of Disputes (the "DSU"), 
Article 64.1 of the Agreement on Trade-Related Asp ects of Intellectual Property Rights (the "TRIPs 
Agreement"), Article 14.1 of the Agreement on Tec hnical Barriers to Trade (the "TBT Agreement"), 
and Article XXII of the Genera l Agreement on Tariffs and Trade 1994 (the "GATT 1994").  This 
request for consultations concerned certain Australian laws and regulations that impose restrictions on 
trademarks and geographical restrictions as well as other plain packaging requirements on tobacco 
products and packaging (the "measures").   
 
Consultations were held on 1 May 2012 with a view to reaching a mutually satisfactory 
solution.  These consultations clarified certain issues pertaining to this matter, but failed to resolve the 
dispute.  Therefore, as specified below, Honduras  requests that the Dispute Settlement Body (the 
"DSB") establish a panel to examine this matter.     
A. THE
 MEASURES  AT ISSUE     
Australia regulates the appearance of marks a nd other design features on the retail packaging 
of tobacco products, as well as on the tobacco products themselves.  It regulates the appearance of the 
brand, business, company or variant name in a standa rd form, font size and location. It prescribes the 
colour and the finish of retail packaging for all tobacco products and also prescribes the requirements 
for wrappers, inserts and onserts. In particular:  
 
 The brand, business or company name on the reta il packaging must be printed in Lucida Sans 
typeface in regular font no larger than 14 points in Pantone Cool Gray 2C. The variant name must meet these requirements but cannot be larger than 10 points.   
 All retail packaging for tobacco products must have  a matt finish and be in drab dark brown 
(Pantone 448C), with the exception of the health  warnings, the text of the brand, business, 
company or variant name and the relevant legislative warnings.    WT/DS435/16 
Page 2  
 
  Non-cigarette tobacco products, such as cigars , may include a band in Pantone 448C, on which 
the following marks may appear: the brand, company or business name and variant name, the name of 
the country in which the cigar was made or prod uced, and an alphanumeric code.  These marks may 
each appear only once on the band and must be printe d in Lucida Sans typeface, no larger than 10 
points in regular font in Pantone Cool Gray 2C.  
 
Honduras understands that Australia maintains these measures through the following instruments: 
 
 Tobacco Plain Packaging Act 2011, Act No. 148 of 2011, "An Act to discourage the use of 
tobacco products, and for related purposes";    
 The Tobacco Plain Packaging Regulations 2011, Select Legislative Instrument 2011, No. 263 
as amended by the Tobacco Plain Packaging Amendment Regulation 2012 (No. 1), Select 
Legislative Instrument 2012, No. 29.  These re gulations apply to the retail packaging and 
appearance of both cigarettes and non-ci garette tobacco products; and,  
 
 The Trade Marks Amendment (Tobacco Plain Pa ckaging) Act 2011; Act No. 149 of 2011, 
"An Act to amend the Trade Marks Ac t 1995 and for related purposes".   
 
In addition to the instruments listed above, this re quest covers any amendmen ts, extensions, related 
instruments or practices.   
B. LEGAL
 BASIS  OF THE  COMPLAINT   
 These measures regulating the plain packaging an d appearance of tobacco products for retail 
sale appear to be inconsistent with Australia's obligations under the following provisions of the TRIPs 
Agreement, the TBT Agreement and the GATT 1994: 
 Article 20 of the TRIPs Agreement, because the use of a trademark is unjustifiably 
encumbered by special requirements, such as (i) use in a special form, for example, the 
specific font size and colour of the brand, busi ness or company name,  and,  (ii) use in a 
manner detrimental to the trademark’s capability  to distinguish tobacco products of one 
undertaking from tobacco products of other undertakings;    
 Article 16.1 of the TRIPs Agreement, because the measures prevent owners of registered 
trademarks from enjoying the rights conferred by a trademark;   
 Article 15.4 of the TRIPs Agreement, because the nature of the goods to which a trademark is 
to be applied forms an obstacle to the registration of the trademark;   
 Article 2.1 of the TRIPs Agreement, which incorporates provisions of  the Paris Convention 
for the Protection of Industrial Property, as amended by the Stockholm Act 1967 ("Paris 
Convention"), in particular (i) Article 6quinqui es of the Paris Convention, because trademarks 
registered in a country of origin outside Australia are not protected "as is", and, 
(ii) Article 10bis of the Paris Convention, because Australia does not provide effective 
protection against unfair competition to nationals  of other countries of the Union and creates 
confusion between goods of competitors;        
 Article 24.3 of the TRIPs Agreement, because Au stralia is diminishing its level of protection 
for geographical indications as compared with th e level of protection that existed prior to 
1 January 1995;    WT/DS435/16 
 Page 3 
 
 
   Article 22.2(b) of the TRIPs Agreement, b ecause Australia does not provide effective 
protection against acts of unfair competition w ith respect to geographical indications and 
creates confusion among consumers related to the origin of the good; 
 Article 3.1 of the TRIPs Agreement, because Au stralia accords to nationals of other Members 
treatment less favourable than it accords to its ow n nationals with respect to the protection of 
intellectual property;    
 Article 2.2 of the TBT Agreement, because the technical regulations at issue create 
unnecessary obstacles to trade that are more tr ade-restrictive than necessary to fulfil a 
legitimate objective; and,  
 Article 2.1 of the TBT Agreement and Article  III:4 of the GATT 1994, because the measures 
at issue result in treatment less favourable of  imported products than of like products of national origin.  
 Honduras considers that Australia cannot justify its measures pursuant to either Article 8 of 
the TRIPs Agreement as necessary to protect human health because they are not consistent with the 
provisions of the TRIPs Agreement or Article 17 of  the TRIPs Agreement as a "limited exception" to 
the rights conferred by a trademark.  
 Honduras considers that the measures described above nullify and impair  benefits accruing to 
Honduras under the TRIPs Agreement, the TBT Agreement and the GATT 1994. 
C. REQUEST
 FOR  THE  ESTABLISHMENT  OF A PANEL   
 Honduras requests, pursuant to Articles 4.7 and 6 of the DSU, Article XXIII:2 of the 
GATT 1994, Article 64 of the TRIPs Agreement and Ar ticle 14 of the TBT Agreement, that the DSB 
establish a panel to examine this matter.  Honduras fu rther requests that the panel have the standard 
terms of reference, as set forth in Article 7.1 of the DSU.  
 Honduras asks that this request be placed on th e agenda of the DSB meeting to be held on 
19 November 2012.   
 
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