WORLD TRADE  
ORGANIZATION   
WT/DS435/1 
IP/D/31 
G/TBT/D/40 
G/L/986 
10 April 2012 
 
 (12-1854) 
 Original:   English 
 
 
 
AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS AND OTHER 
PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND 
PACKAGING 
 
Request for Consultations by Honduras 
 
 
 The following communication, dated 4 April 2012, from the delegation of Honduras to the delegation of Australia and to the Chairperson of  the Dispute Settlement Body, is circulated in 
accordance with Article 4.4 of the DSU. 
 
_______________ 
 
 
Pursuant to Article 4 of the Understanding on Rules and Procedures Governing the 
Settlement of Disputes , Article 64 of the Agreement on Trade-Related Aspects of Intellectual Property 
Rights  (TRIPs Agreement), Article 14 of the Agreement on Technical Barriers to Trade  (TBT 
Agreement), and Article XXII of the General Agreement on Tariffs and Trade 1994  (GATT 1994), 
the Government of Honduras requests consultations with  the Government of Australia with respect to 
certain Australian restrictions on trademarks and other plain packaging requirements applicable to 
tobacco products for retail sale.  
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 standard 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 retail packaging must be printed in 
Lucinda Sans typeface in regular font no la rger than 14 points in Pantone Cool Gray 
2C. The variant name must meet these re quirements 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.  
Non-cigarette tobacco products, such as ciga rs, 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 produced, and an alphanumeric code.  These 
marks may each appear only once on the band and must be printed in Lucinda Sans typeface, no larger than 10 points in regular font in Pantone Cool Gray 2C.  WT/DS435/1, IP/D/31,  
G/TBT/D/40, G/L/986 Page 2 
 
 
  Honduras understands that Australia main tains these measures through the following 
instruments:  
 An Act to discourage the use of tobacco  products, and for related purposes, Act 
No. 148 of 2011 (Tobacco Plain Packaging Act 2011);  
 The Tobacco Plain Packaging Regulations 2011, Select Legislative Instrument 2011, 
No. 263 as amended (Tobacco Plain Packag ing Regulations 2011). These regulations 
apply to the retail packaging and appear ance of both cigare ttes and non-cigarette 
tobacco products; and,  
 The Trade Marks Amendment (Tobacc o Plain Packaging) Act 2011.  
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 tradem ark 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, business 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 incorporating the provisions of the Paris 
Convention, in particular, (i) Article 6 quinquies , because trademarks registered in a 
country of origin outside Australia are not  protected "as is", and, (ii) Article 10 bis, 
because Australia does not provide effective protection against unfair competition to 
nationals of other countries of the Uni on and creates confusion between goods of 
competitors;  
 Article 24.3 of the TRIPs Agreement, because Australia is diminishing its level 
of protection for geographical indications below the level that existed prior to 
1 January 1995;  
 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 
and creates confusion among consumers re lated to the origin of the good;  
 Article 3.1 of the TRIPs Agreement, becau se Australia accords to nationals of other 
Members treatment less favourable than it acco rds to its own 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,   WT/DS435/1, IP/D/31,  
 G/TBT/D/40, G/L/986  Page 3 
 
 
   Article 2.1 of the TBT Agreement and Ar ticle III:4 of the GATT 1994, because the 
measures at issue result in tr eatment 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.  
In addition to the instruments listed above, this  request covers any am endments, extensions, 
related instruments or practices.  Honduras reserves  the right to raise additional legal claims or 
matters during the course of consultations.  
Honduras looks forward to receiving your response to this request. I propose that the date and 
venue of the consultations be ag reed between our two missions.  
 
__________