WT/DS467/15  
 
6 March 2014  
(14-1346)  Page: 1/3  
  Original: English  
 
 AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS, 
GEOGRAPHICAL INDICATIONS AND OTHER PLAIN PACKAGING REQUIREMENTS 
APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING 
REQUEST FOR THE ESTABLISHMEN T OF A PANEL BY INDONESIA 
The following communication, dated 3 March 2014, from the delegation of Indonesia to the 
Chairperson of the Dispute Settlement Body, is circulated pursuant to Article 6.2 of the DSU. 
 
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On 20 September 2013, the Government of In donesia requested consultations with the 
Government of Australia pursuant to Article 4 of the Understanding on Rules and Procedures 
Governing the Settlement of Disputes ("DSU"), Article XXII of the General Agreement on Tariffs 
and Trade 1994 (" GATT 1994 "), Article 64.1 of the Agreement on Trade-Related Aspects of 
Intellectual Property Rights ("TRIPs Agreement "), and Article 14.1 of the Agreement on Technical 
Barriers to Trade ("TBT Agreement ") with respect to certain Australian laws and regulations that 
impose restrictions on trademarks, geographical indications, and other plain packaging 
requirements on tobacco products and packaging.  Consultations were held on 29 October 2013 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, Indonesia respectfully re quests, pursuant to Articles 4.7 and 6 of the DSU, 
Article XXIII of GATT 1994 , Article 64.1 of the TRIPs Agreement , and Article 14.1 of the 
TBT Agreement , that the Dispute Settlement Body ("DSB") establish a Panel to examine this 
matter. Indonesia asks that this request be placed  on the agenda of the DSB meeting to be held 
on 26 March 2014. Indonesia further requests that the Penal have the standard terms of 
reference, as set forth in Article 7.1 of the DSU. 
 A. Specific Measures at Issue  
This request for establishment of a Panel concerns the following measures: 
 Tobacco Plain Packaging Act 2011 , Act No. 148 of 2011, "An Act to discourage the use 
of tobacco products, and for related purposes"; 
 
 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); 
 
 Trade Marks Amendment (Tobacco Plain Packaging) Act 2011 , Act No. 149 of 2011, 
"An Act to amend the Trade Marks Act 1995 , and for related purposes"; and 
 
 Any related measures adopted by Australi a, including measures that implement, 
complement or add to these laws and regulations, as well as any measures that 
amend or replace these laws and regulations. 
 The measures apply to the retail sale of cigarettes, cigars, and other tobacco products. The measures establish comprehensive requirements regarding the appearance and form of the retail 
packaging of tobacco products, as well as the tobacco products themselves. The measures also WT/DS467/15 
 
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  establish penalties, including criminal sanctions, for the violation of these requirements. The 
measures require, inter alia , the following: 
 
 With respect to the retail packaging of toba cco products, the measures (i) regulate the 
appearance of trademarks and geographical indications, including by prohibiting the 
display of design and figurative features, including those forming part of these 
intellectual property rights; (ii) prescribe that the brand and variant names forming 
part of trademarks appear on the front face, top and bottom of the package in a uniform typeface, font, size, color, and placement
1; (iii) prohibit the display of other 
words (except for basic information, including country of origin and manufacturer 
contact details); and (iv) mandate a matt finish and drab dark brown color (Pantone 448C) for retail packaging; 
 
 the measures establish that individual cigarettes may not display trademarks, 
geographical indications or any other marking other than an alphanumeric code for 
product identification purposes; 
 
 the measures provide that individual cigars may carry: the brand name, variant name, 
country of origin, and an alphanumeric code; these must be displayed in a uniform 
typeface, font, size, and color on a single band in a drab dark brown color 
(Pantone 448C)
2; and 
 
 the measures regulate other aspects of both tobacco packaging and tobacco products, 
such as the following requirements: (i) a retail package for cigarettes must be in a 
prescribed size, form and material; (ii) cigarettes must be white3; and (iii) a cigar 
tube must be cylindrical, rigid, and have an opening of at least 15 mm. 
 B. Legal Basis of the Complaint 
 
These measures regulating the plain packaging and appearance of tobacco products for retail sale appear to be inconsistent with Australia's obligations under the following provisions of the 
TBT Agreement , the TRIPS Agreement , and the GATT 1994 : 
 
 Article 2.1 of the TBT Agreement , because the technical regulations at issue accord to 
imported tobacco products treatment less favorable than that accorded to like 
products of national origin; 
 
 Article 2.2 of the TBT Agreement , because the technical regulations at issue create 
unnecessary obstacles to trade because they are more trade-restrictive than 
necessary to fulfill a legitimate objective; 
 
 Article 1.1 of the TRIPS Agreement , because Australia has failed to give effect to the 
following provisions of the TRIPS Agreement; 
 
 Article 2.1 of the TRIPS Agreement , which incorporates the provisions of the Paris 
Convention for the Protection of Industrial Property , as amended by the Stockholm Act 
of 1967 (" Paris Convention "), in particular, (i) Article 6 quinquies of the Paris 
Convention , because trademarks registered in a country of origin outside Australia are 
not protected "as is"; and, (ii) Article 10 bis of the Paris Convention , because Australia 
does not provide effective protection against unfair competition, for example, creating confusion between the goods of competitors; 
 
                                               
1 The brand name and variant must be displayed in Lu cida Sans typeface; no larger than 14 points for 
the brand name and 10 points for the variant name; with on ly the first letter capitalized; in regular font; in the 
color Pantone Cool Gray 2C; and below the graphic heal th warning on the front su rface of cigarette packs. 
2 They must appear only once on the band and be displayed in Lucida Sans typeface; no larger than 
10 points in size; in regular font; and in the color Pa ntone Cool Gray 2C. The brand and variant name should 
be placed horizontally along the length of the band so  that they run around the circumference of the cigar. 
3 However, a cigarette may include an imitation cork tip that is printed brown, and is placed over a filter 
tip. WT/DS467/15 
 
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   Article 3.1 of the TRIPS Agreement , because Australia accords to nationals of other 
Members treatment less favorable than it accords to its own nationals with respect to 
the protection of intellectual property; 
 
 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 16.1 of the TRIPS Agreement , because the measures prevent owners of 
registered trademarks from enjoying the rights conferred by a trademark; 
 
 Article 16.3 of the TRIPS Agreement , because the measures prevent owners of 
registered trademarks that are "well know n" or might become "well known" from 
enjoying the rights conferred by a trademark; 
 
 Article 20 of the TRIPS Agreement , because the use of trademarks in relation to 
tobacco products is unjustifiably encumbered by special requirements, such as (i) use 
in a special form, for example, the uniform typeface, font, size, color, and placement 
of the brand 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 22.2(b) of the TRIPS Agreement , because Australia does not provide effective 
protection against acts of unfair competition with respect to geographical indications, 
for example, creating confusion among consumers with respect to the origin of goods; 
 
 Article 24.3 of the TRIPS Agreement , because Australia is diminishing the level of 
protection it affords to geographical indications as compared with the level of 
protection that existed prior to 1 January 1995; and 
 
 Article III:4 of the GATT 1994 , because the measures at issue accord to imported 
tobacco products treatment less favorable than that accorded to like products of 
national origin. 
 C. Request for the Establishment of a Panel  
Accordingly, Indonesia requests, purs uant to Article 4.7 and 6 of the DSU, Article XXIII of 
GATT 1994 , Article 64.1 of the TRIPs Agreement , and Article 14.1 of the TBT Agreement , that the 
DSB establish a Panel with the standard terms of reference as set out in Article 7.1 of the DSU. 
Indonesia asks that this request be placed on th e agenda of the meeting of the DSB scheduled for 
26 March 2014. 
 
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