WORLD TRADE  
ORGANIZATION   
IP/C/W/565 
7 November 2011  
 
(11-5668) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   Spanish 
 
 
 
AUSTRALIA'S  TOBACCO PLAIN PACKAGING BILL 2011 
 
Communication from the Dominican Republic 
 
 
 This document reproduces the statement of th e delegation of the Dominican Republic under 
item N (Australia's Tobacco Plain Packaging B ill 2011) of the agenda of the Council for 
TRIPS meeting of 24-25 October and is being circulated at its request.  
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I. INTRODUCTION 
1. The Dominican Republic wishes to reiterate its  concern about the plain packaging measures 
currently being considered by Australia's Fe deral Parliament.  The plain packaging bill
1, introduced in 
the Australian Federal Parliament in the course of  this year, is being discussed in the Senate.  
Australia has circulated detailed draft regulations  for the implementation of plain packaging for 
cigarettes and other tobacco products, such as cigars. 
2. The Dominican Republic has expressed concer n regarding these measures both in the Council 
for TRIPS and in the Committee on Technical Barriers to Trade2 and will not repeat all of its 
arguments here.  Other WTO Members have likewise voiced concern at these unprecedented 
measures.3  Lastly, various trade associations representing a wide range of industries have stated their 
concern about these measures.4 
3. This is not an issue that exclusively con cerns tobacco.  The Australian plain packaging 
measures are to be viewed as a threat to the prot ection of intellectual property, which is a vital 
component of international trade, and should therefor e be a matter of concern to all WTO Members.  
Specifically, these measures run counter to the obligations undertaken by Australia under the 
WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the Paris Convention for the Protection of Industrial Property (Paris Convention), incorporated in the 
TRIPS Agreement. 
                                                      
1 G/TBT/N/AUS/67. 
2 IP/C/M/66;  G/TBT/W/339. 
3 IP/C/M/66;  G/TBT/W/336;  G/TBT/W/338.  At the previous Council for TRIPS meeting, several 
Members expressed support in various ways for the concerns raised by the Dominican Republic, including 
Cuba, Ecuador, Honduras, Mexico, Nicaragua,  the Philippines, the Ukraine and Zambia. 
4 See, for example, the letter from the Secretary- General of the ICC to the Hon. Craig Emerson, 
Australia's Trade Minister, dated 20 April 2011;  and the US Business Community Statement in opposition to 
Australia's plain packaging measures, dated 1 June 2011 (joint statement by the US Chamber of Commerce, the 
Emergency Committee for American Trad e, the National Association of Ma nufacturers, the National Foreign 
Trade Council, the United States Council for Internati onal Business, the TransAtlantic Business Dialogue and 
the US-ASEAN Business Council). IP/C/W/565 
Page 2  
 
  II. IMPACT OF THE MEASURES 
4. As the term itself suggests, "plain packaging"  as stipulated in the bill requires essentially 
identical packaging for all tobacco products.  The b ill and its regulations require all packets for retail 
sale to be of the same size, shape and colour.  Trademarks are removed, since the proposed measures 
ban the use of design and trademark features.  A lthough the measures allow use of the brand name 
and variant of the product, these may only appear on the lower part of the front and the top and 
bottom of the packet.  Moreover, the brand name  and the variant name must be displayed in 
a statutorily standardized font style, size and colour.  The graphic health warnings will cover 
75 per cent of the front and 90 per cent of the back of the packet. 
5. By definition, the Australian plain packaging measures will make it impossible to 
differentiate between competing products.  The Dominican Republic considers that these measures 
will violate intellectual property rights and will not  succeed in promoting the public health goals 
pursued by Australia, as a consequence of unwanted eff ects that might lead to higher rather than lower 
tobacco consumption:  on the one hand, prices will tend to drop as a result of the "commoditization" 
of tobacco products and, on the other, plain p ackaging will make it easier to produce counterfeit 
tobacco products and will fac ilitate trade in illicit products. 
III. LEGAL CONSEQUENCES:  THE TRIPS AGREEMENT AND THE PARIS 
CONVENTION 
6. The Dominican Republic considers that Austra lia's plain packaging measures would violate 
Article 20 of the TRIPS Agreement and Article 10 bis of the Paris Convention. 
7. Analysis of these measures in the light of Article 20 of the TRIPS Agreement
5 shows that the 
"use" of trademarks relating to tobacco products w ould be "encumbered" by "special requirements".  
The measures prohibit the use on packets of tobacc o products for retail sale of any design feature, 
allowing only the brand name and variant to be u sed in a predetermined font style and size on an 
identical background.  The special requirements im posed by Australia are "detrimental to [the 
trademark's] capability to distinguish the goods or services of one undertaking from those of other 
undertakings". 
8. At the previous Council for TRIPS meeting in  June 2011, Australia contended that the 
measures in question were justified by objectives of  public health, and it referred to a number of 
studies.  The Dominican Republic understands that the scientific evidence underpinning Australia's 
plain packaging measures has been challenged in  public documents submitted to the Australian 
Government.  In this connection, the Dominican Republic looks forward to receiving an explanation 
from Australia as to how it will reconcile th e divergent views on scientific evidence. 
9. The plain packaging measures would also violate Article 10 bis of the Paris Convention, 
which prohibits "all acts of such a nature as to cr eate confusion by any means whatever with the 
establishment, the goods, or the industrial or co mmercial activities, of a competitor".  As the 
Dominican Republic stated at the previous meeti ng of this Council, the measures in question pose 
a serious risk of confusion in that they elimin ate all design features and impose virtually identical 
packaging for all tobacco products. 
                                                      
5 Article 20 of the TRIPS Agreement establishes the following:  "The use of a trademark in the course 
of trade shall not be unjustifiably encumbered by special  requirements such as use with another trademark, use 
in a special form or use in a manner detrimental to its capability to distinguish the goods or services of 
one undertaking from those of other undertakings".  IP/C/W/565 
 Page 3 
 
 
  10. The Dominican Republic urges Australia to rec onsider its position and to take into account 
the concerns raised in this statement, and co nsequently to honour its obligations under the 
WTO Agreements. 
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