WORLD TRADE  
ORGANIZATION   
WT/DS434/11 
17 August 2012  
 
(12-4476) 
 Original:   English 
  
 
AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS  
AND OTHER PLAIN PACKAGING REQUIREMENTS APPLICABLE TO  
TOBACCO PRODUCTS AND PACKAGING 
 
Request for the Establishment of a Panel by Ukraine 
   The following communication, dated 14 August 2012, from the delegation of Ukraine to the Chairperson of the Dispute Settlement Body, is ci rculated pursuant to Article 6.2 of the DSU. 
 
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On 13 March 2012, the Government of Ukraine ("Ukraine") requested consultations with the 
Government of Australia ("Australia ") pursuant to Article 4 of the Understanding on Rules and 
Procedures Governing the Settlement of Disputes , Article 64.1 of the Agreement on Trade-Related 
Aspects of Intellectual Property Rights  (the "TRIPS Agreement"), Article 14.1 of the Agreement on 
Technical Barriers to Trade  (the "TBT Agreement"), and Article XXII of the General Agreement on 
Tariffs and Trade 1994  (the "GATT 1994") concerning certain Au stralian laws and regulations that 
impose trademark restrictions and other plain packaging requirements on tobacco products and 
packaging (the "measures").   
The request was circulated on 15 Marc h 2012 as document WT/DS434/1, IP/D/30, 
G/TBT/D/39, G/L/985.  Consultations were held on 12 April 2012 with a view to reaching a mutually 
satisfactory solution. Unfortunately, the consu ltations failed to resolve the dispute.   
As a result, Ukraine respectfully  requests that a panel be established to examine this matter 
pursuant to Articles 4.7 and 6 of the Unders tanding on Rules and Procedures Governing the 
Settlement of Disputes (the "DSU"), Article XXIII of GATT 1994, Article 64 of the TRIPS 
Agreement and Article 14 of the TBT Agreement.   
Australia's measures impose significant trademar k restrictions and other so-called "plain 
packaging" requirements regarding the appear ance and packaging of tobacco products. The 
challenged measures are contained in: 
 The Tobacco Plain Packaging Act 2011 (the "Plain Packaging Act"
1) and its 
implementing Tobacco Plain Packaging Regulations 2011 (t he "Regulations"2); 
 The Trade Marks Amendment (Tobacco Pl ain Packaging) Act 2011 (the "Trade 
Marks Amendment Act"3) ; and 
                                                      
1 Tobacco Plain Packaging Act 2011, C2011A00148, Act No. 148 of 2011, An Act to discourage the 
use of tobacco products and for related purposes , 1 December 2011. 
2 Tobacco Plain Packaging Regulations 2011, Select Legislative Instrument 2011 No. 263 as amended, 
consolidated on 13 March 2012, including amendments up to SLI 2012 No.29.   WT/DS434/11 
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   Any further implementing regulations and re lated acts, policies, or practices adopted 
by Australia that guide, amend, supplemen t, replace, and/or implement the above 
mentioned measures.  
The measures are applicable to all tobacco  products grown or manufactured for human 
consumption.
4 They impose criminal penalties for virtually  any action, including manufacture, supply, 
or packaging of tobacco products, that is not in  compliance with the "tobacco product requirements" 
of the Plain Packaging Act a nd its implementing Regulations.5 The Plain Packaging Act provides that 
"[n]o trade mark may appear anywhere on a t obacco product" other than as permitted by the 
Regulations.6 The Plain Packaging Act further provides, in ter alia, that "[n]o trade mark may appear 
anywhere on the retail packaging of tobacco products,"7 permitting the appearance of only the brand 
name, variant, business or company name and othe r marks pursuant to the relevant legislative 
requirements.8 The appearance of the brand name is regul ated by the Plain Packaging Act and the 
implementing Regulations.9  
The Plain Packaging Act further requires that tobacco product packages be "drab dark brown" 
(specified as Pantone 448C in the Regulations) in a matte finish, with no other colors, logos, or brand 
features visible on the package, other than the bran d and variant name in a standard form and font 
below the graphic health warning.10 Tobacco product packaging will continue to contain graphic 
health warnings,11 which are increasing from 30 percent to 75 percent of the front surface of each 
package and continue to cover 90 per cen t of the back surface of the package.12 The Plain Packaging 
Act and its implementing Regulations also regulate th e physical features of retail tobacco packaging, 
imposing a standard form on the type and size of the package to be used.13 The Plain Packaging Act 
provides that cigarette packs and cartons must have  a standardized shape w ith no decorative elements, 
and that cigarette packs must have flip-top openings.14 The lining of cigarette packs must only be foil 
backed with paper, or a material allowed by the Regulations.15 
                                                                                                                                                                     
3 Trade Marks Amendment (Tobacco Plain Packaging) Act 2011, C2 011A00149, Act No .149 of 2011, 
An Act to amend the Trade Marks Act 1995, and for related purposes, 1 December 2011. 
4 Plain Packaging Act, Section 4. 
5 Plain Packaging Act, Chapter 3. 
6 Plain Packaging Act, Section 26. Section 26 (2) furt her states that "No mark may appear anywhere on 
a tobacco product, other than as permitted by the regulations.  Regulations do not permit any trademark to be put 
on the tobacco product. 
7 Plain Packaging Act, Section 20(1). Section 20 (2) further states that "No ma rk may appear anywhere 
on the retail packaging of tobacco products", other than  as permitted by the subsection (3) which refers among 
others to brand names and other marks and trademarks as could be permitted by the regulations.  The Regulations do not permit any trademarks to be put on the retail packaging of tobacco products.   
8 Plain Packaging Act, Section 20(3). The relevant legislative requirements include a health warning, a 
fire risk statement, a trade de scription and a measurement mark. 
9 Plain Packaging Act, Section 21; Regulations, clause 2.4.1. 
10 Plain Packaging Act, Section 19; Regulations, clause 2.2.1. 
11 Graphic health warnings are regulated under the Australian Consumer Law, contained in Schedule 2 
of the Competition and Consumer Act of 2010. 
12 Competition and Consumer (Tobacco) Information Standard 2011, which amends the system of 
health warnings mandated through th e Trade Practices (Consumer Produc t Information Standards) (Tobacco) 
Regulations 2004 (the 2004 Re gulations).  Graphic health warnings taki ng up 75 per cent of  the front surface of 
each package are mandatory  from 1 December 2012. 
13 Plain Packaging Act, Section 18; Regulations, clause 2.1.1. 
14 Plain Packaging Act, Section 18(3)(b). 
15 Plain Packaging Act, Section 18(3)(d).  WT/DS434/11 
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  Australia's measures, especially viewed in the context of Australia's comprehensive tobacco 
regulatory regime,16 appear to be inconsistent with a num ber of Australia's obligations under the 
TRIPS Agreement, the TBT Agreement, and GATT 1994: 
 Article 15.1 of the TRIPS Agreement because th e measures fail to give legal effect to 
the obligation that any distinctive sign be  capable of constituting a trademark, and 
thus that it can be affixed on a lawfully ava ilable product to which it is to be applied; 
 Article 15.4 of the TRIPS Agreement because the measures effectively prevent 
registration and protection of tobacco-relate d trademarks based on the nature of the 
product; 
 Articles 1.1 and 15.4 of the TRIPS Agreement because, to the extent that Australia 
has implemented more extensive protec tion than is required by the TRIPS 
Agreement, it has done so in a manner that  contravenes Article 15.4 of the TRIPS 
Agreement by denying trademark right holders of tobacco related trademarks the 
same right to the exclusive use of the trademark that is recognized for all other 
trademark right holders under Australian trad e mark law based on the nature of the 
product; 
 Article 16.1 of the TRIPS Agreement becau se the measures render ineffective the 
exclusive right of trademark owners to use signs and to prevent third parties from using similar signs, given that the distinctive character of the trademark cannot be 
maintained without using the trademark; 
 Article 16.3 of the TRIPS Agreement because the measures fail to provide the 
additional protection for well-known marks by not permitting tobacco-related trademarks to demonstrate their entitlement to such additional protection; 
 Article 20 of the TRIPS Agreement becau se the measures constitute an unjustifiable 
encumbrance on the use of trademarks by imposing the use of the trademark in a special form and in a manner that is de trimental to the trademark's capability to 
distinguish the goods of one undertaking from those of other undertakings;  
 Article 2.1 of the TRIPS Agreement and Articles 6 quinquies , 7, and 10 bis of the Paris 
Convention as incorporated in the TRI PS Agreement because the measures fail to 
accord effective "protection" of the tradem ark "as is", discriminate against tobacco-
related trademarks based on the nature of th e product, and fail to prevent acts of such 
a nature as to create confusion by any m eans whatever with the establishment, the 
goods, or the industrial or commercial activities, of a competitor; 
                                                      
16 Australia has in place a generalized advertisement ban for tobacco products, set out in the Tobacco 
Advertising Prohibition Act 1992 (the "advertisement ban"). In addition, in the eight Australian States and Territories, retail display bans prohibit the public display of tobacco products in specified categories of retail 
stores (the "retail display bans"). See, e.g., Australian Capital Territory's "T obacco Act 1927", section 20; New 
South Wales' "Public Health (Tobacco) Act 2008", sec tion 9; Western Australia's "Tobacco Products Control 
Act 2006", section 22; Northern Te rritory's "Tobacco Control Act 2011" , section 20; Victoria's "Tobacco 
Act 1987", section 6(2AA); Tasmania's "Public Health  Act 1997", section 72A; Queensland's "Tobacco and 
Other Smoking Products Act 1998", section 26A; South Australia's "T obacco Products Regulation Act 1997", 
section 40. At the state and local level, Australia has also implemented bans on the consumption of tobacco 
products in certain areas and under certain circumstances ("smoking bans"). WT/DS434/11 
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   Article 1.1 of the TRIPS Agreement because Au stralia has failed to give effect to the 
above referenced provisions of the TRIPS Agreement; 
 Article 2.2 of the TBT Agreement because the measures are a technical regulation 
that was prepared, adopted or applied with a view to or with the effect of creating unnecessary obstacles to international trade by being more trade-restrictive than necessary to fulfil the stated health objectives; and 
 Articles I and III:4 of the GATT 1994, Artic le 3.1 of the TRIPS Agreement, and 
Article 2.1 of the TBT Agreement because the measures fail to respect the non-discrimination requirements set out in these provisions by according less favourable treatment to products imported from certain countries than that accorded to like products of Australian origin and to like pr oducts originating in other countries, and 
thereby not providing equal competitiv e opportunities to all imported tobacco 
products alike, and to all foreign trademar k right holders alike, as compared to like 
domestic and imported tobacco produc ts and trademark right holders. 
These violations nullify or impair the benef its accruing to Ukraine under the aforementioned 
Agreements.  
Accordingly, Ukraine respectfully requests th e establishment of a panel with terms of 
reference in accordance with Article 7.1 of the DSU.  
The Government of Ukraine asks that this request  be placed on the agenda of the next regular 
meeting of the Dispute Settlement Body, sche duled to be held on 31 August 2012.   
 
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