AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS AND OTHER PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING
Document: Request for the Establishment of a Panel by Ukraine
Date: 17 August 2012
Document codes: WT/DS434/11
Complainant: Ukraine
Respondent: Australia
Third parties: Argentina, Brazil, Canada, Dominican, Ecuador, EU, Guatemala, Honduras, India, Indonesia, Japan, South Korea, New Zealand, Nicaragua, Norway, Oman, Philippines, Singapore, Taiwan, Turkey, U.S., Uruguay, Zambia, Zimbabwe, Chile, China, Cuba, Egypt, Malaysia, Mexico, Moldova, Nigeria, Peru, Thailand, Malawi
Dispute stage: Mutually Agreed Solution
Agreements cited: Art. 15.1, 15.4, 1.1, 16.1, 16.3, 20, 2.1, 3.1  Intellectual Property (TRIPS)Art. 2.1  Technical Barriers to Trade (TBT)Art. I, III:4  GATT 1994

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 circulated pursuant to Article 6.2 of the DSU.

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 , ,
, Consultations were held on 12 April 2012 with a view to reaching a mutually
satisfactory solution. Unfortunately, the consultations 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 (the "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.

 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 with 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, C2011A00149, 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) further 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 mark 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 description 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 Regulations). Graphic health warnings taking 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).

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 available 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 6quinquies, 7, and 10bis 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").

 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 products 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, scheduled to be held on 31 August 2012.